Petition — Eutectic Corp. v. Metco, Inc.

Supreme Cay, YS?

FILED

AUG 16 1978

— >i -—

IN THE

Supreme Court of the United Starter ———"—

October Term, 1977

No. .4@8-263

EUTECTIC CORPORATION,

NEW METALS CORPORATION, and

METALLIZING COMPANY OF AMERICA, INC.,

Petitioners,

Vv.

METCO, INC.,

Respondent.

—— = ——

a a —-- -——

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

OO

———-— ———-—-

Joun M. CaLimarpE

Attorney for Petitioners

60 East 42nd Street

New York, New York 10017

Of Counsel:

Eveene J. Kau

Marvin N. Gorpon

Hopgoop, Catimarpz, Kaur,

Buavstein & LigBeRMAn

60 East 42nd Street

New York, New York 10017

TABLE OF CONTENTS

A co ovscnsesesesesneees

BROIL EE oe SNES ee

a: a e isivsssnsessnces

Constitutional and Statutory Provisions Involved ......

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Pe a Se a

B. The Opinions Below ...................... ye SR aon,

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Reasons for Granting the Writ ...........00000.....0cccc

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Be oo cctiinsssissenesssss0se.

Ce nn sesavusncnems ae

Appendices :

A—Opinion of United States District Judge

ETT

B—Opinion of the United States Court of Ap-

peals for the Second Cirewit .............0.0000000000.....

C—Section 8, Clause 8. Patents and Copyrights

D—4103. Conditions for Patentability; Non-

Obvious Subject Matter 2000000...

ccc casesscessesesseosenee

Al

bee

TABLE OF AUTHORITIES

PAGE

Cases:

General Electric Co. v. Wabash Co., 304 U.S. 364

Ca, Oe ee i pte oe 9

Graham v. John Deere Co., 383 U.S. 1 (1966), 86 S.Ct.

BN ins ere a ee oe are 7, 11

Great Atlantic & Pacific Tea Company v. Supermarket

Equipment Corporation, 340 U.S. 147 (1950) 71

Ee, a SE oss et Bats tsenl scree 9,10

Lyon v. Boh, 1 F.2d 48 (S.D.N.Y. 1924) «0.000000. 6

Plantronics, Inc. v. Roanwell Corp., 535 F.2d 1397

(2 Cir. 1976), cert. den. 97 S.Ct. 588 ...................... 10, 11

Timely Products Corporation v. Arron, 403 F.Supp.

138, 148; 523 F.2d 288 (2 Cir. 1975) ...........0 10, 11

United Carbon Co. v. Binney & Smith Co., 317 U.S. at

238 (1068), GB BOE. TGB Wb ETD oo ccccesccsaccssessorsscee: 9

U.S. Philips Corp. v. National Micronetices, Inc., et al.,

O50 FOR Tae Fe Cir Be cikes eaninsiotiosor pases 10, 11

White v. Dunbar, 119 U.S. 47, 51-52 (1886) ................ 9

IN THE

Supreme Court of the United States

October Term, 1977

No.

rr silt

Kutectic Corporation, New Mertats Corporation, and

MeTaLuizinc Company or America, Inc.,

Petitioners,

v.

Metco, Inc.,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

Petitioners, Eutectic Corporation, New Metals Corpo-

ration, and Metallizing Company of America, Inc., pray

that a Writ of Certiorari issue to review the judgment of

the United States Court of Appeals for the Second Circuit.

Opinions Below

The Opinion of the Second Cireuit Court of Appeals is

not officially reported, but is reprinted as Appendix B to

this Petition. The opinion of the District Court for the

Kastern District of New York is reported at 418 F.Supp.

1186 and is reprinted as Appendix A.

Jurisdiction

The judgment of the Court of Appeals was entered on

February 6, 1978. A timely petition for rehearing and sug-

gestion for rehearing en banc were denied on May 17, 1978.

The judisdiction of this Court is invoked under 28 U.S.C.

§1254(1).

Questions Presented

1. After finding that the patent claims as worded were

anticipated and invalid, did the court below err in reading

validating elements into the claims?

2. Did the Second Circuit err in holding that the patents

at issue were not invalid for obviousness (35 U.S.C. 103),

on the asserted grounds that the ‘‘invention’’ solved a

problem, despite the holdings of this Court?

Constitutional and Statutory Provisions Involved

This case involved Art. I, Section 8, Clause 8 of the

Constitution (App. C); and Sections 103 and 112 of the

Patent Act of 1952, 35 U.S.C. 103 and 112 (App. D).

Statement of the Case

A. The Facts

This action for declaratory judgment of patent inva-

lidity and noninfringement was brought on January 24,

1972, by petitioners Eutectic Corporation, New Metals

Corporation and Metallizing Company of America, Inc.,

3

in the United States District Court for the Eastern District

of New York. Respondent, Metco, Inc., counterclaimed

for patent infringement and sought an injunction and dam-

ages. Jurisdiction was founded on 28 U.S.C. 1338(a).

Petitioners seek review of the decision of the Court of

Appeals for the Second Circuit, which reversed the judg-

ment of the District Court, holding valid and infringed

certain claims of U.S. Patents Nos. 3,322,515 (the °515

patent) and 3.436,248 (the ’248 patent); the District Court

held the patents valid but not infringed.

The patents are directed to the pairing of two metals,

e.g., nickel and aluminum, prepared for spraying by a flame

spray gun onto a metal surface, much as paint is sprayed.

The ’515 patent covers the flame spray powders, and the

’248 patent covers the admittedly conventional process of

spraying the materials described in the ’515 patent.

The pairs are selected so that when they are made

molten by the flame, they react to form an intermetallic

compound (i.e., a compound of the two metals), and in so

reacting generate additional heat. When two metals react

and thereby generate heat, the reaction is called ‘‘exo-

thermic.’’ Metal pairs which react exothermically have

been well known long before the patents in suit, and their

identification is readily available in metallurgical hand-

books. Specifically, the patents cover 142 pairs, all of

which have been copied out of a standard handbook; the

handbook also discloses the compounds resulting from the

interaction between the metals of each pair when the metals

are made molten and react together. Thus, the component

pairs, the nature of the reaction and the resultant compound

was common knowledge available to the public.

4

The only difference between the information contained

in the handbook and the patents in suit is that the hand-

book did not expressly state that the metal pairs may be

used as a flame spray powder. The °515 patent which

covers the powder prepared for flame spraying, requires

that the metal particles of the pair be attached or pasted

to each other; the patents refer to this arrangement of

particles as a ‘‘composite.’’

Petitioners make a flame spray powder consisting of

nickel and aluminum, a pair selected from the handbook

and covered by the patents at issue.

The basic claim (claim 14) of the 515 patent reads as

follows:

‘¢A flame spray powder in the form of individual clad

particles comprising a nucleus of nickel and a coating

layer of finely divided aluminum particles bound to

the nucleus with a binder and characterized by the

ability of generating heat during flame spraying which

aids in bonding to the surface being sprayed.’’

The claim does not specify any particular proportion

of the nickel to aluminum, nor does it specify that the

particles shall be in composite arrangement.

B. The Opinions Below

The District Court

The District Court held that the key to the generation

of heat was to be found in the percentage relationship of

the nickel and aluminum components, and in the composite

arrangement of the particles, neither of which is spelled

out in the claims in issue (A. 51). The examples in the

a ree eee,

4)

patent specification teach at least 15 weight percent of

aluminum and 85 weight percent nickel; a proportion which

the Trial Judge found went ‘‘to the very heart of [respond-

ent’s] claimed invention.’’ (A. 50).*

Because the percentage relationship of the particles

was found critical to the generation of heat resulting from

the formation of the intermetallic compound, the District

Court held that the claims,

““* * * cannot be read literally without destroying

the essence of the invention claimed. The invention

did not consist of pasting smaller particles of aluminum

powder on larger particles of nickel powder. Indeed,

the patentees were denied a patent they sought on

[such] process * * *. If binding particles of different

metals together with an adhesive film was all there

was to the patentees’ invention, claim 14 would

clearly have been anticipated and invalid. But, as al-

ready noted, and stressed by the patentees throughout

prosecution, the critical factor and essence of the in-

vention was the predetermined relationship between

the component metals which * * * generated surplus

heat through the formation of an intermetallic com-

pound, thereby enabling the sprayed material to bond

to the substrate.’’ (A. 51).

Thus, the District Court found that claim 14 was an-

ticipated and invalid if read literally.** He, thereupon, read

into the claim the essential validating element of the criti-

cal percentage of aluminum that is required to react with —

nickel to produce the intermetallic compound (A. 53).

* The Court also found that respondent’s own powder did not

conform to the specified percentage relationship (A. 50). Italicizing

in quotes throughout brief unless otherwise specified.

** The Court of Appeals agreed with such determination (A. 68).

6

Less than the critical amount of aluminum in the mix-

ture results in the aluminum burning-off and generating

heat in an exothermic reaction called ‘‘oxidation’’ of

aluminum. The use of aluminum in flame spray powders

for the purpose of producing an exothermic reaction and

generating additional heat by oxidation was known in the

prior art. Indeed, the Patent Examiner rejected the patent

applications several times* because of this well-known

property of aluminum in prior art flame spray powders.

The patents were eventually allowed because respondent

was successful in distinguishing between the prior art oxi-

dation of aluminum and the intermetallic reaction between

aluminum and nickel.

The petitioners’ powder used only 5% by weight of

aluminum, which the Trial Court found was too small an

amount to form an intermetallic, but which oxidized in the

flame as taught by the prior art (A. 55, 56).

Thus, the facts and findings of the Trial Judge left

no doubt that:

1. The claims on their face were anticipated and

invalid;

2. Critical validating elements had to be implied

into the claims; specifically, the minimum percentage

of aluminum required to produce the intermetallic;

* The patents in suit are a result of five re-filings of the appli-

cations, after repeated rejections by the Examiner, and finally wear-

ing the examiner down. Judge Learned Hand’s comment in Lyon v.

Boh, 1 F.2d 48 (S.D.N.Y. 1924), regarding the “ant-like persistency”

of solicitors wearing the examiner down, is particularly appropos

here.

ee

7

3. Less than the minimum percentage of aluminum

in the flame spray mixture resulted in a reaction dis-

closed in the prior art;

4. Petitioners’ powder used only 5% aluminum

which amount was insufficient to produce an inter-

metallic, and the aluminum burned-off by oxidation

as in the prior art powders. ,

The Second Circuit

The Second Circuit, despite repeated admonishments

by this Court that patentability is not to be determined

by secondary considerations such as ‘‘problem,’’ ‘‘commer-

cial success’’ and the like, sustained the patents essentially

by applying the ‘‘problem test’’ (A. 64-67). The Circuit

Court never applied the basic Graham* tests, infra, and

never addressed itself to the finding by the Trial Judge

that the claims as worded were invalid. If the Cireuit

Court had applied the basic Graham tests, it would have

compared the claims with the prior art and as stated by

the Trial Judge would have found the claims anticipated.

Under the mandate of this Court, it should then have found

the patents invalid.

The plain fact of the matter is that the decision below

secures to respondent a monopoly of indeterminable scope

and incalculable effect, embracing the use of the admittedly

old aluminum oxidation process, based upon patents which

are clearly in violation of this Court’s standards.

* Graham v. John Deere Co., 383 U.S. 1 (1966).

Reasons for Granting the Writ

A. In Summary

Petitioners respectfully submit that this Court should

review the present case because:

1. The decision applying the ‘‘problem test’’ of

patentability is clearly in conflict with the rulings of

this Court with respect to the construction of the pat-

ents clause of the Constitution (Art. I, §8, Cl. 8); and

the standards for determining the validity and scope

of a patent monopoly.

2. The decision below validates a patent on a basis

which is not specified or disclosed in the claims. This

decision is in conflict with the conclusions of this Court,

and it opens a potentially explosive area of patent ad-

judication.

3. The issues are of great importance to the ad-

ministration of the patent laws and to the national

interest in the preservation of an open, competitive

society in which access to the fund of knowledge is not

interfered with beyond the strict limits of the Consti-

tution as construed by this Court.

B. Summary Argument

1. Conflict With Decisions Of This Court

(a) Viewed in light of this Court’s prior decisions,

patent claims may not be treated as a ‘‘nose of wax which

may be turned and twisted in any direction, by merely re-

ferring to the specification, so as to make it include some-

thing more than, or something different from, what its

9

words express.’’ White v. Dunbar, i119 U.S. 47, 51-52

(1886). The Trial Judge expressly stated that the claims,

read literally, were ‘‘anticipated and invalid.’’ The Second

Cireuit agreed with the Trial Judge’s reasoning. Thus,

under the Dunbar rule of this Court, the claims are invalid

and may not be validated by reading critical elements into

the claim as the Trial Judge acknowledged he was required

to do.

(1) The lower courts sustained the validity of the

claims on the basis of reading into the claims specific

component proportions capable of forming an inter-

metallic compound—which are not asserted in the

claims. A patent may not be validated by features

not specified in the claims. 35 U.S.C. 112; United Car-

bon Co. v. Binney & Smith Co., 317 U.S. at 228 (1942),

63 S.Ct. 165 at 170. The scope of protection granted by

a patent is defined by the language of its claims, and it

is the ‘‘claims which define the boundaries of a patent

monopoly.’’ Great Atlantic & Pacific Tea Co. v. Super-

market Equip. Corp., 340 U.S. 147 (1950), 71 S.Ct.

at 128. It is the claims and only the claims which

‘‘measure the invention.’’ General Electric Co. v.

Wabash Co., 304 U.S. 364 (1938), 58 S.Ct. 899, 902.

(b) Viewed in light of this Court’s prior decisions, the

patents are invalid for lack of invention and for obvious-

Ness.

(1) The Second Circuit has adopted the novel and

impermissible ‘‘existence of a problem’’ test for

determining patentability. We respectfully submit

that a reading of opinions in other Courts of Appeals

10

involving questions of patentability underscores the

need for this Court to review the present case, and to

affirm and reaffirm the constitutional and statutory

standards which should be applied in all patent adjudi-

cations. |

For examples of the Second Circuit’s departure from

this Court’s precepts, see Timely Products Corporation v.

Arron, 523 F.2d 288 (2 Cir. 1975), which gave rise to the

‘“problem’’ test of patentability in dictum reading: ‘*We

can conceive of no better way to determine whether an in-

vention would have been obvious’’ than to apply the ‘‘ prob-

lem’’ test. This Court had since the A ¢ P case in 1950

prescribed the better way, and in Graham v. John Deere Co.,

383 U.S. 1 (1966), specifically articulated the primary tests

as the better way.

The Circuit’s opinion in Timely Products was written by

District Judge Conner, sitting in the Second Circuit by

designation. Judge Conner, a former patent attorney, in

an article published in the American Patent Law Associa-

tion, 5 APLA Journal 77-86 (1977), states that he wrote the

relevant portion of Timely Products for the specifie pur-

pose of challenging this Court’s decisions that ‘‘secondary

considerations’’ of long-felt need, commercial success and

problem-solving do not establish ‘‘invention’’ and ‘‘non-

obviousness’’; and he notes with satisfaction that the Sec-

ond Circuit has followed his lead in Plantronics, Inc. v.

Roanwell Corp., 535 F.2d 1397 (2 Cir. 1976), cert. den. 97

S.Ct. 538, and in U.S. Philips Corp. v. National Micronetics

Inc. et al., 550 F.2d 716 (2 Cir. 1976). This case is the

latest in the series emerging from the Second Cireuit

11

using the problem-test formula in determining patentability.

The principie at issue is clear. The patents are con-

cededly a combination of prior art. The Second Circuit

decision confined itself essentially to the ‘‘secondary con-

siderations’’ of the alleged existence of a problem which

the patented composition ‘‘solved’’ (A. 64-67).

In his article, Judge Conner candidly discloses that the

purpose and thrust ot the Plantronics case and the Philips

case is to depart from Graham, and subsequent decisions

of this Court. Their purpose and effect is to convert the

‘*secondary considerations”’’ into the dispositive test of in-

vention and non-obviousness. As Mr. Justice White stated

(97 S.Ct. at 541, citing prior decisions of this Court), this

Court ‘‘has consistently and repeatedly rejected the claim

that the [constitutional] standard of invention or [the

statutory requirement of] non-obviousness can be satisfied

solely by these ‘objective’ criteria.’

The validity issue in this case is plain: it is presented

by the Second Circuit’s adherence to the problem-solving

principle of Timely Products and its attempted exaltation

of ‘‘secondary considerations’’ to primary and conclusive

bases of patentability. The issue presented is of basic im-

portance to patent law to our constitutional and economic

system of open-enterprise. The Second Circuit is a major

forum. Its decision in the present case is not isolated or

a ‘‘sport’’; this is the fourth recent case in which the pres-

ent issue figures. And the present decision is likely to be

followed in other circuits.

We respectfully submit that the Court should put an

end to the forum-shopping which these conflicts have in-

12

vited, and should terminate the situation in which patent

validity, access to knowledge, and the survival of competi-

tors depends upon the choice of forum.

Conclusion

F or the reasons stated, a writ of certiorari should

issue to review the judgment and opinion of the United

States Court of Appeals for the Second Circuit.

Respectfully submitted,

Joun M. CaLIMAFpE

Attorney for Petitioners

60 East 42nd Street

New York, New York 10017

Of Counsel:

Evucene J. Kaui

Marvin N. Gorpon

Hopcoop, CaLiMAFDE, KAuit,

Buaustein & LieBERMAN

60 East 42nd Street

New York, New York 10017

Appendices

Appendix A

Opinion of United States District Court

Neaher, District Judge

DISTRICT COURT

EK. D. New Yorx

_—_—_—E ee

Eutectic Corporation, et al.

v.

Metco, Inc.

No. 72C102 Decided July 13, 1976

—_—— ee

This action, which was tried by the court on the facts,

involves questions of validity and infringement of United

States Patent 3,322,515 (the ‘515 patent) and United States

Patent 3,436, 248 (the ’248 patent) owned by defendant Met-

co, Inc. The action was begun by plaintiffs as a declaratory

judgment action, requesting a declaration of non-infringe-

ment and invalidity of the patents. Defendant counter-

claimed, charging infringement by each plaintiff. Jurisdic-

tion is grounded on the patent laws,of the United States, 28

U.S.C. §1338.

Preliminary Statement

Plaintiff Eutectic Corporation (‘‘Eutectic’’) and plain-

tiff New Metals Corporation (‘‘New Metals’’), its wholly-

owned subsidiary, are New York corporations, having their

on ZZ

A2

Appendix A

principal place of business in Flushing, New York. Plain-

tiff Metallizing Company of America (‘‘Metallizing’’), a

customer of Eutectic, is an Illinois corporation having its

principal place of business in Chicago, Illinois. Defendant

Metco, Inc. (‘‘Metco’’) is a Delaware corporation having

its principal place of business in Westbury, New York.

Eutectic, since its founding in 1940, has been engaged in

developing, manufacturing and marketing special alloys,

torch equipment and other consumable products utilized in

the soldering, brazing and welding field. In 1970 Eutectic

announced the development of a new exothermic nickel-

aluminum powder tradenamed ‘‘E:xotec,’’ which would

eliminate the need for a subsequent fusing operation in

order to bond a metal coating using Eutectic’s ‘‘Spram’’

process for spray welding applications in the glass mold

industry. Subsequently, Eutectic developed its own ‘‘ Roto-

Tec’’ flame spray process based upon Exotee and added

‘*Durotec’’ and ‘‘ Xuper-Bond’’ powders to its product line.

All of these products are basically nickel-aluminum com-

positions.

Metco has been in the business of manufacturing and

selling metallizing and flame spraying equipment and pro-

viding related materials and technical services since before

1938. It claims that Eutectic’s Exotec, Durotec and Xuper-

Bond products are infringing copies of a series of nickel-

aluminum self-bonding flame spray powders Metco had

developed aboui 1960, and which it had begun successfully

marketing in 1963, subsequent to the filing of the patent ap-

plication that eventually led to the issuance of the ’515 and

’248 patents on the Metco powders and process.

A3

Appendia A

Metco originally commenced this litigation in the North-

ern District of Illinois’ against Metallizing because of the

latter’s sale of a product called ‘‘Moguloy M-55’’, which

Metco claims also infringes the patents in suit. Metallizing

has been in the flame spray field since the 1920’s and had

previously marketed a Metco-patented molybdenum flame

spray material hereinafter mentioned. Moguloy M-55 was

Metallizing’s first venture into nickel-aluminum powder, a

product manufactured by Eutectic which Metallizing pur- ©

_ chased through Eutectic’s subsidiary, New Metals.

Plaintiffs challenge the validity of the Metco patents on

a variety of grounds: (1) the claimed invention was fully

anticipated by prior patents; (2) the use of composite

nickel-aluminum powder for flame spraying as described in

the patents would have been obvious to one having ordinary

skill in the art, and Metco’s employees simply obtained a

patent on coated powders purchased from a producer of

such materials; and (3) the ’515 patent claims merely an un-

patentable new ‘‘use’’ for a known material, and the ’248

patent an admittedly conventional process for spraying the

material covered by the ’515 patent. Plaintiffs also deny

infringement, claiming that the Eutectic powders, including

Moguloy M-55, are different from Metco’s products and not

covered by the literal terms of the patents.

The Industrial Art Involved

The patents in suit relate to the industrial technique of

flame spraying, formerly known as metallizing. Flame

spraying is a process for applying a metal, a ceramic (metal

1. See Eutectic Corporation v. Metco, Inc., 346 F.Supp. 845,

174 USPQ 25 (E.D.N.Y. 1972).

A4

Appendix A

oxide), or a mixed metal/ceramic (cermet) coating in a

molten state to another metal surface (also called sub-

strate) to form a bond between the two that will perinit the

coated surface (or object) to undergo further finishing op-

erations, resist corrosion, or withstand high temperatures

or other wear and stress during use. The coating to be

sprayed on the substrate is commonly referred to as ‘‘flame

spray material.’’? The flame spray material, which may be

in rod, wire or powder form, is fed into a device called a

‘‘flame spray gun.’’ As the flame spray material passes

through the gun it is reduced by gas-oxygen or electric are

flame to a molten or semi-molten state and propelled in

atomized form onto the surface to be coated, much as paint

is sprayed.

From the original development of flame spraying about

the turn of the century until the 1940’s, the only practicable

method of assuring some degree of adhesion (bond

strength) between a flame spray coating and a metal surface

was to mechanically roughen the surface by grit blasting,

cutting threads and the like, so as to provide crevices or

undereuts into which the sprayed molten particles would

enter, forming a mechanical interlock. The first commercial

utilizations of flame spraying were in connection with rela-

tively low melting point metals sprayed through a wire gun

in order to produce corrosion-resistant and decorative

metal coatings. It was during this period that the process

was known as ‘‘metallizing.’’

Although improvements were subsequently made in

metallizing guns and materials and the mechanical treat-

ment of surfaces, no significant commercial development

A5

Appendix A

occurred until the mid-1940’s when Arthur P. Shepard, a

Metco engineer and deceased co-patentee of the patents in

suit, discovered the self-bonding properties of molybdenum

as a flame spray material. He found that molybdenum,

when prepared in wire form and sprayed onto a clean un.

roughened surface, would self-bond to form a base coating

with a high bond strength (about 2,000 psi), to which sub-

sequently applied flame spray materials would also tena-

ciously adhere. Shepard was granted U.S. Patent 2,588,421

on that discovery, and molybdenum wire remained the only

known and widely used self-bonding material in the flame

spray field for almost 15 years.

Molybdenum wire, despite its commercial success, had a

number of disadvantages. It was difficult and messy to use;

caused wear on equipment because of its hardness; could

only be applied at a relatively slow spray rate; would not

satisfactorily bond to copper, copper alivy, or nitrided sur-

faces; required a high degree of operator skill for satisfac-

tory application; and could not be used where the part being

sprayed would subsequently be subjected to use at tempera-

tures above 600°. At such temperatures, the molybdenum

would oxidize and deteriorate, destroying the bond. Efforts

to overcome some of these problems by attempting to spray

molybdenum in powder form were not successful.

It is Meteo’s claim in this action—sharply controverted

by plaintiffs—that another Metco engineer, Ferdinand J.

Dittrich, working under Shepard, made the next important

advance im the art which resulted in the patents in suit.

This took the form of a self-bonding flame spray powder

of nickel-aluminum composite granules which Metco orig-

A6

Appendix A

inally introduced as ‘‘ Metco 404’’ in 1964, while the patent

applications were pending. Metco aserts the new powder

overcame practically all the disadvantages of molybdenum

wire, was widely accepted in the flame spray field as replac-

ing molybdenum to a large extent, and has enjoyed great

commercial success.

The Patents and Claims in Issue

Metco’s ’515 patent issued to Dittrich and Shepard on

May 30, 1967, on an application filed March 25, 1965 as a

continuation-in-part of earlier applications dating back to

November 22, 1960, and is directed to a product, a flame

spray material in powder or wire form. The ’248 patent to

the same patentees issued on April 1, 1969 on an application

filed May 26, 1966 as a division of the application resulting

in the 515 patent. It is directed to a process of flame spray-

ing the material disclosed in the 515 patent.* Both patents

were later assigned to Metco by the patentees.

Claims 4 and 14 of the 515 patent and Claims 1 and 4

of the ’248 patent, quoted in the margin, constitute the mat-

ter substantially in issue between the parties.* Those claims

2. Both patents bear the same caption “Flame Spraying Exother-

mically Reacting Intermetallic Forming Composites.” Although the

disclosure of the ’248 patent appears to be identical with that of the

’515 patent, it was required to be prosecuted by the Patent Office as

an independent and distinct invention within 35 U.S.C. §121.

3. ’515 Patent (PX 11)

“4, A flame spray material comprising a composite in a form

suitable for flame spraying formed of aluminum and nickel and

characterized by the ability of generating heat during flame spray-

ing which aids in bonding to the surface being sprayed.

. ss

(footnote continued on next page)

el me ee 4

A7

Appendix A

teach the composition and process of spraying a flame

powder of aluminum and nickel in composite form, which

has the ability of generating additional heat in an exo-

thermic reaction during spraying. It is that heat which is

claimed to aid the resultani nickcl aluminide coating to self-

bond, i.e., adhere firmly, to smooth, clean metal surfaces as

well as conventionally roughened surfaces.

A novel element claimed to contribute to the ‘‘unex-

pected’’ self-bonding results of the patented powder (or

wire) is its ‘‘composite’’ form. The term ‘‘composite’’ in

the patent designates not a mere mixture of powdered com-

ponent metals but ‘‘a structurally integral unit’’ in which

each granule of powder contains particles of nickel and

aluminum bound in close contact with each other by a dry

film binder.*’ The patent also describes a simplified method

“14. A flame spray powder in the form of individual clad

particles comprising a nucleus of nickel and a coating layer of

finely divided aluminum particles bound to the nucleus with a

binder and characterized by the ability of generating heat during

flame spraying which aids in bonding to the surface being

sprayed.”

248 patent (PX 12)

“1, In the flame spray process in which a heat-fusible ma-

terial is heated in a heating zone to at least heat-softened condi-

tion and propelled in such condition out of said zone in finely

divided form onto a substrate, the improvement which comprises

passing the heat-fusible material into said zone in the form of

a composite comprising at least two distinct components un-

alloyed together as a single alloy and in proportion and form

sufficient to exothermically react with each other at the temper-

ature developed in the heating zone, forming. an intermetallic

compound.

x ok Ok

“4, Improvement according to claim 1 in which one of said

components is aluminum and the other nickel.”

See PX 7, Prior Art Booklet, which reproduces both paterts.

4. See PX 7, 515 patent, col. 2, lines 57-69, and Drawing Fig. 2.

A8

Appendia A

of ‘‘cladding’’ the component metals so as to form the

required composite.°

In sum, the patented invention under the claims in issue

consists of the following elements: (a) a composite of

powdered aluminum and nickel (b) each particle unit there-

of comprising a nucleus of nickel clad with finely divided

aluminum particles bound together by a resin binder, (c)

capable of releasing heat of at least 7500 calories per gram

atom in an exothermic reaction during flame spraying, (d)

which produces an adherent self-bonded coating on a clean

unheated and unroughened metal surface.

Plaintiffs do not question the utility of the flame spray-

ing materials described in the claims in suit. Their pri-

mary contention, simply stated, is that the patents are in-

valid because they teach merely the application of metal-

lurgical principles and techniques already revealed in the

prior art. It is well known, plaintiffs point out, that certain

pairs of metals such as aluminum and nickel will, when

heated together at suitable temperatufes and proportions,

react exothermically, that is, release a surplus quantity of

heat to form an intermetallic compound such as nickel alu-

minide. This metallurgical effect, say plaintiffs, is dis-

closed in many earlier patents which render the claimed

invention neither novel nor unobvious to one having or-

dinary skill in the art. Plaintiffs further contend that after

rejecting five prior applications by the patentees, the exam-

iner was prevailed upon in an ex parte interview to allow

5. Id., col. 5, lines 1-32.

6. Plaintiffs’ opening statement, Tr. 20. “Tr.” denotes pages of

trial record.

A9

Appendix A

the 515 patent to issue upon the fifth refiling and did so

without being fully informed as to the prior art. The grant

of the 515 patent led, in turn, to the issuance of the ’248

patent.

To decide the questions of the lack of novelty and of ob-

viousness or non-obviousness of the subject matter of the

patents, ‘‘the scope and content of the prior art are to be

determined; differences between the prior art and the

claims at issue are to be ascertained; and the level of or-

dinary skill in the pertinent art resolved.’’ Graham v. John

Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 466-467 (1966).

In this case, since plaintiffs claim as ‘‘ prior art’’ certain

‘fearly work’’ of Dittrich, the surviving co-patentee,’ and

question the manner in which the patents were obtained, a

chronological presentation hopefully will illumine discus-

sion of the Graham issues which follow.

Scope and Content of Prior Art

Patentee’s Early Work

Dittrich has been employed by Metco as an engineer

since 1938. He was called by plaintiffs to testify concerning

his early familiarity with the subject matter. After describ-

ing in general terms Metco’s ‘‘experimentai’’ interest in the

developing field for metal spray powders in the period

1946-1955, Dittrich was particularly queried about work

Metco had done for Climax Molybdenum Company during

7. In their Supplemental Notice of Reliance under 35 U.S.C.

§282, dated October 16, 1973, as limited by a consent Order signed

October 26, 1973, plaintiffs specified as prior art “the earlier work of

the assignee Dittrich on nickei aluminum coatings to which he alluded

at his deposition.”

A10

Appendix A

1951-1954 on so-called ‘‘layered coatings’’ of nickel-alu-

minum.

Climax at that time was seeking to prevent failures in

molybdenum sheet metal used in jet engines which occurred

because of its high oxidation rate at elevated temperatures.

Dittrich participated in the experimental flame spraying

work on panels of metal which were heat-tested in Climax’s

own laboratories. Through his own study of the available

technical literature, he was aware it was ‘‘common knowl-

edge’’ that nickel and aluminum were exothermic materials

which would react in combination to form the intermetallic

compound nickel aluminide, generating heat in the process,

and that nickel aluminide had high oxidation resistance

properties. In his work on the Climax problem he sprayed

alternating layers of melted aluminum powder and melted

nickel powder on metal panels without obtaining the de-

sired exothermic reaction. Nor did he obtain such a re-

action when he sprayed powder mixtures of nickel and

aluminum.

After the ‘‘unsuccessful’’ work on the Climax problem,

Dittrich continued intermittent spraying of layered coat-

ings at Metco in attempts to obtain an exothermic reaction

on the surface of a sprayed panel. He utilized not only

nickel and aluminum but also aluminum and other metals.

He continued this experimentation, he testified, with the

thought that a reaction of combined metals on the surface

of a substrate would provide both bonding and other quali-

ties desired in the coeting. Unable to accomplish this, he

tried removing the layered coatings from the substrate and

heating the sandwiched constructions with a torch. His

findings on these sandwich experiments are summarized

ON eR PE | ties Oe lees bee me

All

Appendiz A

in an internal Metco memorandum dated October 6, 1955,

captioned ‘‘Combination (Exothermic) Reactions Upon

Heating Layered Coatings of Various Metals.’? PX 16.

There he reported:

‘‘Rapid local overheating of one corner of a Ni-Al

sandwich will trigger a fairly violent exothermic re-

action with the resulting alloying of the Ni and Al.

The entire mass of the sheet will coalesce into pools

of the alloy formed.”’

The reported results, he testified, ied him to conclude

then that a ‘‘composite’’ of nickel and aluminum in close

physical contact, if reduced to the right particle size, ap-

peared to be ‘‘a possibility’’ for use in flame spraying to

obtain a sprayed coating with a good bond and the high

oxidation resistance of nickel aluminide. Although ac-

knowledging that both nickel and aluminum powders were

then available, Metco made no effort to develop such a con-

cept. Dittrich testified, in explanation, that Metco had no

equipment for ‘‘agglomerating’’ metal particles and its

homemade ball milling equipment was not adequate for

the necessary grinding and sizing. Instead, Dittrich con-

tinued reviewing the literature, looking for a commercial

means of obtaining such particles.®

Sometime in 1959 Dittrich found what he thought he

was looking for in a publicized announcement of the Sher-

ritt Gordon Mines Ltd. of Alberta, Canada. PX 52. The

announcement stated that Sherritt Gordon would soon

make available on a semi-commercial basis ‘‘metal and

8. Metco did not itself manufacture flame spray materials but

had them made by others according to its own size and other specifi-

cations.

A12

Appendia A

nonmetal powders coated with nickel, cobalt, copper and

other metals’’ that ‘‘promise improved properties for

powdered-metal and metal-ceramic parts.’’ The announce-

ment also mentioned particle size ranges which Dittrich

conceded encompassed commonly known particle sizes of

flame spray powder materials.

On February 24, 1959, shortly after seeing the Sherritt

Gordon announcement, Dittrich wrote V. N. Mackiw of that

company an ‘‘evasive’’ letter of inquiry requesting samples

and other information about the newly announced metal-

coated powders. In particular, he sought to know whether

certain refractory oxide powders could be coated with

nickel or cobalt, what size ranges could be coated and what

the costs might be. Dittrich’s letter concluded by stating

‘*Tt is entirely possible that, with little development work,

composite powders for coating could be developed which

would be to our mutual benefit.’

As a result of his inquiry, Metco received information

and samples and placed orders for a variety of coated

powders to be produced by the Sherritt Gordon process

upon which Mackiw had obtained a patent in September

1958. See infra, p. 30. Dittrich experimented with these

powders, which included aluminum coated with nickel, and

concluded that the nickel-aluminum material had ‘‘many

possibilities, but requires additional work.’’ PX 33.

Dittrich reported his findings to Shepard, then manager

of Metco’s research and development department, in a

memorandum dated December 18, 1959, entitled ‘‘Self

9. Dittrich was at that time time project engineer for Metco,

which was then known as Metallizing Engineering Co., Inc. PX 53.

10. See PX 7, Prior Art Booklet, Mackiw.

A13

Appendix A

Bonding Intermetallic Coatings for High Temperature

Oxidation Resistance.’’ Id. Therein he summarized the

‘‘well known”’ properties of nickel aluminide, its desir-

ability as a coating fused to miscellaneous base materials

exposed to corrosive environments, and the prior unsuc-

cessful work with ‘‘simple mixtures of nickel and aluminum

powder”’ on the Climax Molybdenum problem. The mem-

orandum detailed his procuring of special nickel-aluminum —

powder particles he had Sherritt Gordon prepare and the

self-bonding results obtained when sprayed as composite

powder. With his report Dittrich transmitted a hand-

written note dated December 21, 1959, in which he stated:

‘‘The following ideas and properties are, I believe,

completely new and useful:

‘*(1) Starting with a composite powder, using the

heat of the flame to effect alloying.

‘*(2) Using the heat generated by an exothermic

combination reaction to superheat the particles in

the spray-stream.

‘*(3) A self bonding oxidation resistant material

both for primary coatings to protect base materials

from oxidation, and to use as an undercoat-oxida-

tion resistant bonding coating for ceramic thermal

barrier coatings.’? PX 33.

Dittrich’s report and discussion with Shepard led to

authorization for further developmental work. On July 1,

1960, Dittrich sent Sherritt Gordon 101% pounds of ‘‘special

aluminum powder”? in five particle size ranges, requesting

they be coated with nickel ‘‘to give a finished powder

Al4

Appendix A

which is the following composition by weight: aluminum

17.5% plus %%/minus 144%, nickel remainder.’’ PX 50.

He advised Sherritt Gordon ‘‘that this composition is the

optimum for our purpose, and we would like your advice

as to whether or not you can hold the above tolerance on

the aluminum content of the finished powder.’’ Id.

Dittrich conceded that the nickel-coated aluminum pow-

der described in Example 1 of the 515 patent (and repeated

in the ‘248 patent) was the material received from Sherritt

Gordon in response to his letter and formed the basis for

the patent application filed five months later.

The Patent Office Proceedings

The parent application filed November 22, 1960 was

titled ‘‘Flame Spraying Synergistic’' Composites.’’ The

specification pointed out that while metallic powders

formed of several constituents were known in the flame

spraying art, they were generally ‘‘a powder mixture’’ or

at best ‘‘a particle aggregate.’’ An object of the claimed

invention was the spraying of heat-fusible material ‘‘in a

novel form which allows the obtaining of superior results.’’

The novel form was ‘‘a clad composite consisting of nuclei

and at least one coating layer of a different material which

will synergistically act with the nuclei in the process.’’

The purpose was to increase ‘‘the thermal efficiency of the

process, aid in the bonding of the coating and/or produce

results and effects by this in situ generated heat which

cannot be achieved by the externally supplied heat’’ of the

11. Webster defines “synergist” as “2. An agent that increases

the effectiveness of another agent when combined with it.” Third

New International Dictionary (1971) at 2320.

. eee en

Ald

Appendix A

flame spray gun. The specification noted that ‘‘Bonding

to the base or substrate being coated may also be aided

by the synergistic action of exothermic reaction, as for

example, in the case of nickel-coated aluminum powder.’’

Flame spraying in accordance with the invention was

to be effected ‘‘in the conventional manner.’’ Production

of the clad composite powder could be accomplished ‘‘in

any known or desired manner’’ but ‘‘preferably by the

known chemical plating processes.’’ One was described

as the process of plating by ammoniacal solution—the iden-

tical process disclosed in the earlier Mackiw patent herein-

after discussed. The drawing attached to the application

contains a Fig. 1 cross-sectional diagram of a grain of the

novel flame spray powder which is virtually identical with

Fig. 1 in the Mackiw patent drawing, except for the sub-

stitution of ‘‘aluminum’’ for ‘‘metal nucleus’’ and of

‘‘nickel’’ for ‘‘metal coating.’’

The 1960 application presented 62 claims, some drawn

to ‘‘improvements’’ in the flame spray process and others

to a flame spray material, powder or wire. For example,

Claim 51 specifically claims an

‘‘improvement to increase the bond which comprises

spraying an intermediate layer of two components

exothermically reacting with each other, forming an

inter-metallic compound.’’ PX 1.

Claim 24 describes

‘*A flame spray powder in the form of individual,

synergistically clad particles comprising a nucleus and

at least one coating layer of a material differing from

said nucleus and synergistically active with said nu-

cleus in flame spraying.’’ Id.

Al6

Appendix A

The Patent Office, perceiving the intermingling of different

claims, allowed none and rejected none. Restriction was

required on the ground that the claims were drawn to two

separate and distinct inventions, (1) ‘‘a flame spray coat-

ing process,’’ and (2) a powder and wire comprising ‘‘com-

posite metal stock.’? PX 1.

The Patent Office action led to a succession of new

application filings with gradually changing titles but all

exhibiting the same amphibolous character as between

product claims and process claims. PX 2-5. The examiner

again required restriction of claims in the next application

filed August 16, 1961, PX 2, citing the Gutzeit patent here-

inafter discussed, infra p. 35. The patentees elected to

prosecute claims drawn to ‘‘composite metal stock’’, re-

serving non-elected claims for a divisional application.

The elected product claims were rejected as unpatentable

in view of prior art not relied on here. Reconsideration

was denied despite the patentees’ argument that ‘‘[t]he

concept of providing individual powder particles contain-

ing a nucleus and a coated layer * * * is entirely novel to

the applicants and produces superior spraying results and

superior coatings * * * bonded and placed more uniformly

and securely.’’

On Metco’s appeal, however, the Patent Office Board

of Appeals reversed the examiner, ruling that the patent

references he relied on ‘‘do not disclose or suggest the

powder of the appealed claims.’’ In consequence, U.S.

Patent 3,254,970 (not involved here) was issued to the

patentees on June 7, 1966, for a ‘‘flame spray clad powder

composed of a refractory material and nickel or cobalt.’’”

12. Both the Gutzeit and Bradstreet patents, hereinafter dis-

cussed, were cited in the patent as references of record. Se infra

pp. 32, 35.

Al7

Appendia: A

The divisional application filed on.:October 26, 1962

included: all claims, except those allowed in U.S. Patent

3,254,970. PX 8. The examiner again rejected all remain-

ing claims as» unpatentable citing,: among -others, the

Mackiw; Shwayder, Bleakley,’ Hensel and Montgomery |

patents relied on by plaintiffs here. See infra pp. 28-33:

The examiner viewed those references as collectively teach-

ing various techniques in flame spraying and the employ-

ment of particulate material, from which it would be ob-

vious: that. percentages of) material:are a mere matter of

choice. The application was marked ‘‘ Abandoned.’’ PX 8.

A further application was filed on February 10, 1964,

as a continuation-in-part of the prior applications. PX 4.

This application was. also subjected to a restriction re-

quirement because claims were drawn to four separate and

distinct ‘inventions, i.e., a process: of flame spraying, a

composite metal stock particle, a composite metal wire, and

a process-of applying a coating to a particular: powder. :

The patentees elected to proceed with a group of claims

drawn to the process of producing a coated flame spray

powder,: The described process, which is pertinent to the

claims in suit, included a method more simple than chemi-

cal.plating for:cladding a nickel nucleus with finely-divided

aluminum particles. It consisted of dispersing aluminum

powder in a ‘‘binder’’ such as phenolic varnish and admix-

ing it. with a nickel powder to form the composites, which

are then dried to form a free-flowing powder.

The examiner rejected all the process claims as: un-

patentable over Hensel and Mackiw,.among other refer-

ences, pointing out that the process of :coating a metal

A18

Appendix A

powder with an adhesive and coating the substrate with

another metal were techniques well known in the art. The

patentees, citing 35 U.S.C. §103, filed a response arguing

that the subject matter ‘‘as a whole’’ related to a process

for producing a specific material, i.e., a flame spray powder

which is self-bonding, and that ‘‘the crux of the invention

resides in this choice of metals’’ in order to achieve the

specific self-bonding result not otherwise attainable. PX

4, p. 78.

On December 23, 1966, the Board of Appeals affirmed

the examiner in all respects, viewing the claims as simply

‘*a method for coating metal powder (e.g., nickel) with a

different metal powder (e.g., aluminum.)’’ The Grala

patent, hereinafter discussed, was added as a reference ‘‘to

show that aluminum and nickel are known to form a com-

pound Ni Al with high exothermic heat development’’ and

that it is clear from Mackiw ‘‘that composite binary coated

powders are well known * * * and we find a teaching therein

that aluminum powder can be coated with nickel (column

2, lines 16 and 34).’’ PX 4.

Prior to the Board of Appeals rejection of the 1964

process application, the patentees on March 25, 1965, filed

the product application which resulted in the issuance of

the 515 patent. PX 5. That application, filed as a con-

tinuation-in-part of the 1964 application, was identical with

the latter in its specification of the claimed invention, in-

cluding the references to ‘‘self-bonding.’’? The restricted

claims, however, relating to the flame spray material itself

(product) were renumbered.

Renumbered claim 1 reads:

‘‘A flame spray material comprising a composite in a

form suitable for flame spraying, formed of at least

A19

Appendix A

two metal components which exothermically react with

each other when melted, forming an intermetallic

compound.”’

The foregoing is the exact statement of claim 1 of the ’515

patent except for the later addition of the following lan-

guage appearing in the patent (PX 11, col. 15, lines 63-65) :

‘‘and characterized by the ability of generating heat

during flame spraying which aids in bonding to the

surface being sprayed.’’

The genesis of the foregoing language becomes evident

from the further proceedings.

After some preliminary contention over the examiner’s

requirement for further distinction as between process and

metal stock material again intermingled in the claims as

drawn, the éxaminer on April 15, 1966 rejected the claims

now embraced in the ’515 patent ‘‘for failing to particularly

point out and claim the invention as required in 35 U.S.C.

112”’ and also as unpatentable under 35 U.S.C. §103*

13. The examiner held the claims

“unpatentable over Bayer in view of Schrewelius, Herz, Grala

et al., and Mackiw et al. The basic reference discloses exorther-

mically reacting metal powders. Grala et al. teaches that nickel

and aluminum are exothermically reacting elements. Schrewelius

teaches that it is old to add boron to flame-spray powders. Herz

teaches that it is old and well known to have powder metals

for flame spraying in hydride form. Mackiw et al. shows that it

is old to form composites of metal powders by having a metal

coating covering a metal nucleus. No invention is seen in sub-

stituting nickel and aluminum or other elements known to be

exothermically reactive in the composition of the basic reference.

Or in adding boron a well known fluxing element or in having

the metals in the form of hydrides or in employing the coated

composite because all these are taught by the secondary refer-

ences to be old and well known in the art and the applicants have

produced no new and unobvious results.” PX 5, pp. 66-67.

—

A20

Appendix A

Metco responded to the examiner’s action by making

certain amendments which became the present ’515 patent

claims, contending that the ‘‘invention as set forth in the

instant application is believed to be directed to a major

breakthrough ‘and pioneering development in the flame

spray. field’? PX 5 at p. 71. Stressing that under 35

U.S.C. §103 the invention as a whole must be considered,

including unique and unexpected properties possessed by

a material, and disclaiming any intent to obtain a patent

on well-known metallurgical phenomena. Metco defined

the canned invention as follows:

‘‘The: applicants’ * * * invention is limited to the

concept of combining the metals which are known to

react in this manner into the flame spray composite

which produces the completely novel flame spray ma-

terial. There is, of course, nothing in the prior art

which would teach or indicate that merely because

components would react in this manner that they would

bée useful as flame spray material or that the same

should be combined in a specific form in order to make

a successful self-bonding flame spray material.’’ PX

5 at p. 76.

The examiner, stating he was unable to see ‘‘what unique

and wnexpected properties’’ the material possessed ‘‘that

would make it unobvious from the art cited’’, adhered to

his ruling. |

On November 9, 1966, Metco responded to the exam-

iner’s action by making the addendum to claim 1 quoted

above as indicative of ‘‘the unexpected properties which the

material possesses’? and which must be considered under

§103.. On that same date an ex parte discussion occurred

ee Oe ee ee

A21

Appendix A

between Metro’s patent counsel and the examiner—which

plaintiffs criticize—and shortly thereafter the examiner

allowed the ’515 patent on the flame spray powder claims.

On: May 26, 1966, a further application was filed as a

division of the March 1965 application (515 patent) cov-

ering the flame spraying process claims as to which re-

striction had been required. PX 6. That application also

survived prior rejections by the examiner and led to the

issuance of the ’248 patent. The first rejection came on

December 11, 1967, the examiner relying on Herz, Shway-

der, Bleakley, Mackiw, Bradstreet and Grala, hereinafter

mentioned, in addition to other prior art. These refer-

ences in the examiner’s view showed it was old and obvious

to apply flame spray coatings of exothermically reacting

materials, to use coated component powders in the process,

and to utilize a binder to form the feed imaterials. PX 6,

pp. 65-66. Metco obtained reconsideration, contending that

none of the references disclosed the flame spraying of a

composite containing components which exothermically re-

acted to form an intermetallic compound, or taught a proc-

ess capable of achieving the novel self-bonding result

claimed.

When the examiner adhered to his rejection, Metco’s

patent counsel again obtained an ex parte interview—also

criticized by plaintiffs—and submitted an affidavit by Dit-

trich, sworn to June 10, 1968, stating that tests in which a

mere combination of nickel powder and aluminum powder

were flame sprayed onto a substrate, did not result in an

adherent coating, whereas those metals did so when pre-

pared in accordance with the process claims of the applica-

A22

Appendia A

tion and had the tensile bond strength stated in the aff-

davit. Following that conference, claim 1 was amended to

state that the heat-fusible components ‘‘are distinct and

unalloyed with respect to each other and * * * are present

in the form and in proportion such that they react exother-

mically with each other.’’ Metco emphasized ‘‘that the

nature of the physical association of the two components

used in this process is critical.’’ Thereafter the process

claims were allowed and the ’248 patent issued.

Prior Art References

The prior art plaintiffs relied on at trial is listed in

the margin.’* Of the ten prior patents designated, only

one, Haglund No. 2,943,951, was not referenced by the

Patent Office in the prosecution of the patents in suit. The

Bleakley, Mackiw, Herz, Grala and Shwayder patents are

specifically cited in the ’248 patent, and Mackiw, Herz and

Grala are also cited in the 515 patent. The Hensel, Mont-

14.

Bleakley 2,231,247 Feb. 11, 1941

Herz 2,884,688 May 5, 1959

Bradstreet 2,904,449 Sept. 15, 1959

Haglund 2,943,951 July 5, 1960

Montgomery 2,775,531 Dec. 25, 1956

Gutzeit 2,908,589 Oct. 13, 1959

Mackiw 2,853,403 Sept. 23, 1958

Grala 2,910,356 Oct. 27, 1959

Scwayder 3,049,435 Aug. 14, 1962

Hensel 2,370,242 Feb. 27, 1945

Journal of the Electrochemical Society, Feb. 1957, pp. 104-110,

“Structure of Chemically Deposited Nickel’, by Gutzeit, et al.

The alleged “earlier work” of the patentee, Dittrich, on nickel-

aluminum coatings referred to in Supplemental Notice of Reliance,

dated October 16, 1973.

A23

Appendia A

gomer’, Bleakley, Bradstreet and Gutzeit® patents were

specifically cited and discussed by the Patent Office in re-

viewing the several applications for the patents in suit.

The 7515 and ’248 patents are so closely interrelated as

not to warrant separate discussion of the prior art as be-

tween product and process.

The earliest reference, Bleakley (1941), is titled ‘‘ Meth-

od of Forming Composite Metal Struetures.’? The exam-

iner twice cited Bleakley, among others, in rejecting Met-

co’s claims (PX 2, 6) on the ground it was obvious to spray

two or more metals in combination. Bleakley teaches thc

feeding of two or more metals or other materials of dif-

ferent melting points separately but simultaneously into

a closed melting chamber under pressure and spraying

them in their mixed molten state onto the surface to be

coated. The metals were fed into the chambers in ‘‘strands”’

ot rod or wire. , To obtain ‘‘a good bond”’ it was necessary

to first prepare the surface either by using a ‘‘thermit’’

type flux or by heating it to bonding temperature during

the spraying operation. No claim was made that the re-

sultant coating was self-bonding.

Hensel (1945), titled ‘‘Refractory Metal Composition’’,

discloses an improvement for ‘‘powder metal bodies’?

formed according to the procedures of powder metallurgy.

Plaintiffs rely on Hensel to show only that the process

15. Plaintiffs suggest that the Gutzeit patent was cited only to

support a requirement for restriction and not considered for technical

content. See PX 2, p. 67. This overlooks the fact that both Gutzeit

and Bradstreet appear as “References Cited By Examiner” as of

record in the allowance of U.S. Patent 3,254,970 to Dittrich and

Shepard. See PX 2 at p. 130. Plaintiffs’ argument that the patentees

made a “surreptitious attempt” to remove Gutzeit from the attention

of the Patent Office (Post-Trial Brief at 19) is therefore rejected.

A24

Appendix A

recommended in the patents in suit for making clad or

‘‘eoated’’ particles by coating the powder granules of the

component with an adhesive (binder) and then dusting the

adhesive-coated particles with another metal in powdered

form was long known in the art. Even Hensel does not

claim the invention of this adhesive coating technique nor

does his patent relate to flame spraying.

Montgomery (1956), titled ‘‘ Method of Coating a Metal

Surface’’, relates to the formation and spraying of what are

known as ‘‘cermet’’ flame spray materials composed of ‘‘a

bonded mixture’’ of particles of metal and particles of a

ceramic material such as a metal oxide. The cermet parti-

cles may be flame sprayed but it is done by a ‘‘powder

weld’’ process which involves a subsequent fusion or weld-

ing step to make the coating material stick to the surface.

The patent recommends that the surface ‘‘be sand-blasted

before applying the coating,’’ There is nothing in Mont-

gomery which discloses or suggests a self-bonding material.

Mackiw (1958), heavily relied on by plaintiffs, is titled

‘*Method of Producing Composite Metal Powders’’ and dis-

closes a chemical plating process for producing ‘‘a com-

posite metal powder comprised of at least two different

metals’’ having different chemical and/or physical proper-

ties. As already noted, the identical drawings of the ’515

and ’248 patents contain a Fig. 1 cross-section of a clad par-

ticle composite of aluminum core with nickel coating that is

virtually identical with a cross-section drawing of a com-

posite nucleus and coating of two undesignated metals in

Fig. 1 of Mackiw. Also, both the ’515 and ’248 patents

describe as one method of making the ‘‘clad powders”’ the

A25

Appendix A

use of the same chemical plating process described in

Mackiw.

Mackiw, however, diseloses no relationship between the

composite metal powders there described and the art of

flame spraying. Mackiw’s object, like that of Hensel, was to

develop an improved process for producing composite metal

powders for use particularly in powder metallurgy. While

plaintiffs insist that ‘‘powder metallurgy’’ includes flame

spraying, it is plain from Mackiw and Hensel that the term

connotes the art of compacting or pressing metal powder

into shapes for alloying treatment in the manufacture of

metal parts which do not lend themselves to fabrication by

conventional melting and casting methods.’® Nor is there

any suggestion in Mackiw of a combination of nickel-alu-

minum. Both metals are merely listed in a larger group

having similar properties which may be dispersed in a

chemical solution in order to coalesce with metals of another

group having disparate properties.

Focusing on another element of the claimed invention,

plaintiffs point to the Herz and Grala patents (both 1959)

as showing it was well known that nickel and aluminum ‘‘in

the proper proportions and in composite form reacted to-

gether in an exothermic reaction to form the intermetallic

compound, nickel aluminide.’’* Herz, titled ‘‘Sintered Ni-

Al-Zr Compositions’’, is another patent in the field of pow-

der metallurgy rather than flame spraying or flame spray

16. The Sherritt Gordon announcement, supra. p. 14, also indi-

cates that the Mackiw powders were primarily directed to méttalurgi-

cal procedures quite different from flame spraying, such as roll-com-

pacting (direct production of metal strip from powder), and standard

pressing and sintering techniques. PX 52.

17. Pl. Post-Trial Brief at 21.

A26

Appendia A

materials. Its disclosure is directed entirely to the prepara-

tion of a nickel-aluminum alloy which would not deteriorate

when formed into shapes but could retain high rupture

strength for prolonged periods at high temperatures in use.

Herz found that the addition of zirconium, and heating the

nickel-aluminum-zirconium powder mixture until an ‘‘ex-

othermic reaction’’ began, produced a nickel aluminide plus

zirconium as a homogenous conglomerate. This material

was then crushed again into powder in order to compact or

cold press various shapes as desired and to give them the

requisite 100% density by sintering at high temperatures.

Grala, on the other hand, while also concerned with

nickel-aluminum intermetallic composition prepared by the

method of powder metallurgy, sought to overcome or con-

trol the exothermic heat developed by the intermetallic

reaction which had been found to weaken the resulting alloy.

Grala’s solution was to design a special induction furnace

unit, as illustrated in the patent, and to prepare the nicked

and aluminum charge not in powder or grain form but as

small flat chips and fragments with the aluminum placed on

top of the nickel in a crucible.

Bradstreet (1959), titled ‘‘ Method and Compositions for

Flame Spraying’’, relates to methods of overcoming the

problem of ‘‘glassy coatings’’ when surfaces were flame

sprayed with ceramic materials such as refractory oxides.

Due to the brittle nature of glass, such coatings frequently

failed by cracking or chipping because of the unequal

thermal expansion of the underlying substrate. Bradstreet

found that this ‘‘glassy’’ effect could be avoided by retain-

ing the crystalline structure of the ceramic starting mate-

A27

Appendix A

rials during the flame spraying process. Bradstreet teaches

that one of several ways to accomplish this is to inject

finely-divided aluminum powder into the flame along with

the ceramic material. As the aluminum oxidizes, i.e., burns,

it raises the temperature providing additional heat to allow

high melting ceramic material to reach its sintering tem-

perature, the critical factor in the retention of the desired

crystalline structure of the refractory coating. Bradstreet

claims that applying any of the several methods he de-

scribes will result in the ‘‘deposit of the sintered particles

as an adherent coating on said surfaces.’’* However, al-

though Examples I and II of the patent refer to coatings

that were ‘‘tightly adherent to the surface’’, no claim of

self-bonding was made. Each example shows that the steel

surface was ‘‘sand blasted prior to application’’, and in

Example I also ‘‘treated with a solution of phosphoric

acid.’’? And Bradstreet himself recommended that ‘‘to im-

prove * * * the bond * * * it is desirable to roughen the

surface prior to application of the coating.”

Shwayder (1962), titled ‘‘Process for Applying Tung-

sten Carbide Particles to a Workpiece Surface’’, was di-

rected to overcoming the substantial loss of expensive tung-

sten carbide through vaporization, oxidation or dissolution

during the process of welding it to metal surfaces to harden

them. Shwayder’s solution was to coat the ground tung-

sten carbide particles with nickel or nickel-nickel phosphide

as a ‘‘sacrificial material which evaporates, oxidizes and

also dissolves in ferrous material’’, saving the tungsten

18. PX 7, Bradstreet, cols. 8-9.

19. PX 7, Bradstreet, col. 6, lines 1-4.

A28

Appendia A

carbide from a similar fate and avoiding its loss during

welding.

As taught in Shwayder, the nickel coating of the tung-

sten carbide particles could be accomplished either by an

electrolytic bath or a chemical process described in another

patent. One of several methods to apply the coated parti-

cles was by flame spraying them onto the workpiece ‘‘and

simultaneously flame heating both workpiece and parti-

cles.’’ No claim was made that the coating was self-bonding.

Haglund (1960), not cited by the examiner, is offered

by plaintiffs as a further prior disclosure of mixing alumi-

num with flame spray materials to generate additional heat

by means of an exothermic reaction. The parties agree

that Haglund, titled ‘‘Flame Spraying Method and Com-

position’’, relates to the fiame spraying of molybdenum

disilicide. Particles of that composition are normally

coated with a silicon dioxide film which prevents them from

sticking together to form a ‘‘coherent’’ coating upon a

surface when they are flame sprayed. Haglund solves this

problem by the addition of metallic aluminum which ex-

othermically reacts with the silicon dioxide during the flame

spraying, thereby enhancing ‘‘the sintering together of the

surface coating on the object treated.’ The heat of the

exothermic reaction overcomes the silicon dioxide coating

and enables the particles of molybdenum disilicide to stick

together; there is no indication it has anything to do with

their sticking to the surface being sprayed.

Gutzeit (1959), on which plaintiffs most heavily rely

and contend was overlooked by the examiner, but see n. 15,

supra, was considered by their expert, Dr. Nicholas J.

20. PX 7, Haglund, col. 1, lines 55-60.

A29

Appendix A

Grant, to be the most pertinent prior art reference. En-

titled ‘‘Method of Flame Spraying an Alloy and the Re-

sulting Article’, Gutzeit and his related article written in

1956, n. 14, supra, according to plaintiffs, clearly anticipate

the Metco patents in disclosing a flame spray material ‘‘in

composite form’’, namely nickel and phosphorus, which

‘‘reacts exothermically’’ when flame sprayed ‘‘to form the

intermetallic compound nickel phosphide.’’ They further

claim that the ‘‘heat developed in this reaction’’ improves

the adherence or bonding of the sprayed coating to the

surface.”

There is no dispute that the Gutzeit nickel-phosphorus

material is the waste metallic reaction precipitate of a

chemical plating bath utilized in another industrial proc-

ess,” although phosphorus itself is not a metal. The Gut-

zeit patent was directed to a method of reclaiming valuable

nickel and phosphide in the spent bath. The salvaged

precipitation material is dried and ground into an ‘‘alloy”’

powder which may be flame sprayed in a conventional man-

ner to form a ‘‘coherent’’ and ‘‘adhering’’ nickel phosphide

coating on a surface. Dr. Grant acknowledged that the

Gutzeit material was unique and specialized and could only

be obtained from the spent plating bath source. Nonethe-

less, he characterized it as a ‘‘composite’’ of nickel and

phosphorus which formed an intermetallic compound when

21. Pl. Post-Trial Brief at 18-19.

22. Known as the Kanigen process, in which the nickel coating

of interiors of large tanks or other vessels is accomplished by a chem-

ical reduction method. The coating bath is regenerated from time to

time but eventually must be discarded due to a buildup of unwanted

nickel phosphide. Gutzeit’s object was to salvage the nickel and

try to put it to some use.

A30

Appendix A

subjected to heat, as indicated in Gutzeit’s 1956 article, and

thus anticipated the claimed invention of the Metco patents.

Plaintiffs contend that the prior art ‘‘reveals every

facet of the patented invention’’ and therefore nothing

‘‘new’’ has been contributed to the existing fund of knowl-

edge as required by 35 U.S.C. §101.7* Without doubt, as

they point out, the prior patents exhibit such separate fea-

tures of the invention as coated particles (Mackiw, Hensel),

the simultaneous flame spraying of different melting point

metals (Bleakley), the use of aluminum powder to start an

exothermic reaction during flame spraying for the purpose

of generating heat (Bradstreet, Haglund), and the flame

spraying of a combination powder material to form an

intermetallic compound coating (Gutzeit). But to say that

the presence of these features deprives the Metco powders

of all patentable novelty ‘‘falls slightly short of the mark

because the fact that each of its elements may be antici-

pated by prior art does not preclude patentability of a

novel and nonobvious combination. * * * The inquiry to be

made is whether the combination produces a nonobvious

‘synergistic result,’ in which the ‘whole in some way ex-

ceeds the sum of its parts’ ’’ [emphasis in original; cita-

tions omitted]. Koppers Company, Ine. v. S & S Corru-

gated Paper Machinery Co., Ine., 517 F.2d 1182, 1188, 185

USPQ 705, 710-11 (2 Cir. 1975).

The question of novelty under §§101-102 is, of course,

distinct from that cf obviousness under §103, a defense also

23. 35 U.S.C. §101 provides in part:

“Whoever invents or discovers any new and useful process

* * * or composition of matter, or any new and useful improve-

ment thereof, may obtain a patent therefor. * * *”

A31

Appendix A

strenuously advanced by plaintiffs. Burgess Cellulose

Company v. Wood Flong Corporation, 431 F.2d 505, 508,

166 USPQ 417, 419-420 (2 Cir. 1970). A resolution of those

questions necessarily requires a closer comparison of the

prier art and the claimed invention, and to that we now

turn.

Differences Between Prior Art and Claims in Suit

Ascertaining the differences between the prior art and

the claims at issue requires a precise understanding of the

inventive idea the claims are said to embody. The paten-

tees do not claim discovery of the principles of exothermic

reaction or intermetallic compound formation as between

certain metals. Their puient specification acknowledges

that ‘‘[a]n extremely large number of metal components

are known which can be melted together in an exothermic

reaction, forming an intermetallic compound with the gen-

eration of heat.’’ PX 11, col. 3, lines 58-61. Admittedly

‘*{a]ny of these component pairs may be utilized in ac-

cordance with the invention’’ provided they are suitable

for flame spraying as taught in the patent. Id. And, as

Dittrich acknowledged in his research memorandum of De-

cember 18, 1959, ‘‘[t]he high temperature strength and

oxidation resistance of the intermetallic compounds, nickel

aluminide in particular, are well known.’’ PX 33.

Nor do the patentees claim invention of the methods or

processes by which the component metals, for example,

nickel and aluminum, may be united to form clad ‘‘compo-

site’? powder granules. Mackiw (1958) unquestionably

discloses one ‘‘mode of forming the clad powders’ de-

A32

Appendix A

scribed in the 515 patent. PX 11, col. 4, lines 63-68, em-

phasis supplied. Indeed, it was news of Mackiw’s com-

mercially feasible method of producing coated powder

particles, Dittrich testified, that spurred him to resume

experimental work on the flame spray powders described in

the 515 patent. PX 52, 53. The other ‘‘preferred and

greatly simplified mode of forming the clad powders,’’ the

adhesive binder technique, PX 11, col. 5, lines 1-17, while

apparently considered novel by Dittrich, was long ago men-

tioned by Hensel (1945) as the examiner repeatedly pointed

out during the prosecution.

What then is the basic idea which can fairly be seen to

be ‘‘new and useful,’’ §101, and not found in the prior

art? Dittrich’s own pithy statement, quoted from PX 33

supra p. 16, is difficult to improve upon. In terms

of the claims in issue, he taught the flame spray art how

a highly oxidation-resistant nickel aluminide coating could

be made to self-bond firmly to a clean smooth substrate by

the use of conventional flame spray equipment and proce-

dures. To achieve that result, however, the starting mate-

rial must be capable of generating an exothermic reaction

releasing sufficient heat to superheat the particles in the

spraystream so that they would bond to the surface. The

only way to ensure and control such a reaction was to pre-

pare the nickel-aluminum powedr or wire in the composite

form described in the patents and illustrated in the patent

drawing.

Plaintiffs challenge the novelty of such claims, asserting

that Dittrich simply obtained a patent on Mackiw’s ready-

made material or at best found a ‘‘new use’’ for an old

A33

Appendix A

material which could not be patentable.* The Mackiw

claims, however, were of very limited nature, being di-

rected solely to a method for chemically plating or coating

particles of one metal with another so as to produce ‘‘a

composite metal powder.’’ PX 7, Mackiw. To the extent

that any use of such powders was suggested, it was to form

‘‘compacts, particularly in powder metallurgy * * * in the

manufacture of special metal parts * * * [and] also in the

powder metal industry.’’ Id. and PX 52. There was no

mention of flame spraying, nor of the selection of any par-

ticular metals to accomplish a given result, but merely a

large enumeration of metals in groups, including nickel

and aluminum, which are amenable to the Mackiw process.

Furthermore, plaintiffs’ own evidence shows that the

nickel-aluminum particle composites which became the pat-

ented flame spray powders in suit were the product of Dit-

trich’s specifications, not Mackiw’s. Metco, as already

noted, was primarily a manufacturer of metallizing and

flame spraying equipment and had been long engaged in

technical research and development in that field. DX IA.

While it sold powder and wire materials to users of such

equipment, those materials were made by others according

to Meteo technical specifications, supra n. 8. The same

procedure was followed in 1959-1960 when Dittrich pro-

24. For the latter proposition, plaintiffs cite a comment of Judge

Learned Hand in Old Town Ribbon & Carbon Co. v. Columbia R. C.

Mfg. Co., 159 F.2d 379, 72 USPQ 57, (2 Cir. 1947), a case decided

prior to the 1952 Patent Act which modified the old rule by allowing

patentability for a “new use of a known process, composition of matter

or material.” Rohm & Haas Co. v. Roberts Chemical, Inc., 245 F.2d

693, 699, 113 USPQ 423, 427 (4 Cir. 1957). See also Ansul Com-

pany v. Uniroyal, Inc., 448 F.2d 872, 169 USPQ 759 (2 Cir. 1971) ;

Application of Waldbaum, 457 F.2d 997, 1002-3, 173 USPQ 430,

433-434 (C.C.P.A. 1972).

A34

Appendix A

cured specially ordered nickel-aluminum coated sample

powders from Sherritt Gordon, Mackiw’s employer. PX

53, 33 and 50. The contemplated use and function of these

special powders was also Dittrich’s idea, not Mackiw’s. An

inventor need not perfect the embodiment of his idea with

his own hands; he ‘‘may use the services, ideas and aid of

others. * * *’’ Hobbs v. United States Atomic Energy Com-

mission, 451 F.2d 849, 864, 171 USPQ 713 (5 Cir. 1971).

Mackiw’s invention of a method for producing compos-

ite metal particles cannot be found to have anticipated the

solution of the self-bonding problem in flame spraying to

which the claims here were directed. Nor can Gutzeit’s

process for reclaiming and utilizing unique prereacted in-

dustrial waste be seriously viewed as such an answer. The

evidence is compelling that it was Dittrich, admittedly with

the aid of Mackiw’s process, who taught how commercially

available metal powders could be adapted for use in the

ordinary flame spraying process to obtain the sought-after

self-bonding coating desired by the trade.

On the evidence and compared against the prior art, the

nickel-aluminum flame spray materials disclosed in the

claims at issue were clearly a ‘‘new and useful * * * com-

position of matter’’ in their distinctive arrangement, func-

tion and end result, and therefore patentable under 35

U.S.C. §§101, 102.

Novelty and unquestioned utility, however, do not guar-

antee patentability. ‘‘A device may be new and useful and

yet still not be patentable if an examination of the prior

art and the ordinary skill of the artisan reveals that the

new and useful innovation is obvious.’”? Burgess Cellulose

Company v. Wood Flong Corporation, supra, at 508, 166

USPQ at 419-420.

A35

The Question of Obviousness

Plaintiffs assert obviousness under 35 U.S.C. §103 as

their strongest challenge to the validity of Metco’s patent

claims, based on a somewhat different definition of the ap-

plicable field of prior art and the level of ordinary skill of

those engaged in the art. Their overall view of the prior

art is virtually identical with the contention of a plaintiff

accused infringer quoted in Koppers Company, Inc. v. S &

S Corrugated Paper Machinery Corporation, 517 F.2d 1182,

1187-88, 185 USPQ at 710 (2 Cir. 1975):

‘‘The only difference between the subject matter of

[claims in suit] and the prior art is that four well-

known elements have been combined in a single device

wherein the elements function in the same manner as

was known in the prior art and produce the same ex-

pected results.’’

Here, of course, the four key elements are (1) nickel-

aluminum ‘‘composite’’ powder, (2) flame spray process,

(3) exothermic reaction generating additional heat, and (4)

which aids in self-bonding the resultant coating to the sub-

strate. But unlike Koppers, supra, there is a serious dis-

pute as to whether elements (1) and (4) appear in some

form in applicable prior art which would render them ob-

vious to one of ordinary skill in the art.

‘‘In making the determination of ‘obviousness’,’’ the

Supreme Court has only recently reminded us, ‘‘it is im-

portant to remember that the criterion is measured not in

terms of what would be obvious to a layman but rather

what would be obvious to ‘one reasonably skilled in [the

applicable] art.’ Graham, supra, 383 U.S. at 37, 148 USPQ

at 474.’’ Dann v. Johnson, S.Ct. , 44 LW 4463

at 4466, 189 USPQ 257 (March 30, 1976).

A36

Appendix A

Since the parties here disagree as to what is the appli-

cable art, that question must first be resolved. Metco con-

tends it is the art of flame spraying previously described, su-

pra p. 5. Plaintiffs contend that flame spraying is but one of

the techniques employed in the broader and presumably

more learned field of powder metallurgy. Portions of trea-

ties in evidence tend to support plaintiffs’ view. PX 72, 73.

But one of them also shows that powder metallurgy as an

art is a ‘‘somewhat narrow field * * * concerned with mold-

ing and sintering of powders to produce finished parts’’ and

thus quite different from the art of flame spraying, which

is concerned with the coating of metal surfaces. Some con-

firmation of this distinction appears from an earlier patent

application of one of plaintiff Eutectic’s own engineers,

which referred to ‘‘The art of flame spraying.’? DX CS.

The court finds that the art of flame spraying is of such

technical complexity and industrial importance, and so suf-

ficiently distinct from the art of powder metallurgy, as to

be considered the applicable art for purposes of this case.

Whatever may be the relationship or distinction between

powder metallurgy and flame spraying, there is no doubt

that the level of ordinary skill applicable here is not that

of the shop artisan but of the professionally trained tech-

nologist. As is evident from both the prior art and the

technical qualifications of party employees who testified,

the average skilled worker engaged in the engineering re-

search and development of either field would have held

degrees in metallurgy or physical chemistry and perhaps

even advanced degrees up to the doctorate. For example,

Dr. Herbert 8. Ingham, Jr., manager of Metco’s research

and development department since he came there in 1960,

A37

Appendix A

holds B.S., M.S. and Ph.D. degrees in physics. Eutectic’s

vice-president in overall charge of research and develop-

ment, Joseph F’. Quaas, holds degrees in chemical engineer-

ing and chemistry and prior to coming to Eutectic in 1950

had been employed as a metallurgist and development en-

gineer in the steel industry. While Dittrich was not the

holder of academic degrees, there is no question that his

early technical training in the engineering field was sub-

stantially broadened by long experience in research and

development at Metco, as is evident from the paper he

presented to the American Ceramic Society in 1963. PX 40.

Would it have been obvious to those so skilled that the

formation and flame spraying of nickel-aluminum powders

as taught in the patents in suit would produce a self-bond-

ing coating on a metal substrate that had not been heated

or otherwise treated to receive it? Dr. Grant, plaintiffs’

expert, agreed that by ‘‘self-bonding’’ was meant a coating

which would weld or alloy to the substrate in an as-sprayed

condition and that a tenacious bond was one within the

range of 2,000 to 4,000 psi. There is no question that the

Metco powders fulfilled these requirements. He conceded

also that prior to the introduction of the Metco nickel-

aluminum powders, the only known self-bonding flame

spray material was molybdenum wire, of whose limitations

he was aware. And he acknowledged that the Metco pow-

ders and wire were the first to be accepted as self-bonding

materials which had a higher bond strength on the average

than molybdenum and that they opened up new areas of use

in the glass molds and aircraft industries.

Dr. Grant nonetheless was of the opinion that the com-

position, reaction and end result of the Metco powders was

A38

Appendix A

entirely ‘‘predictable’’ from the prior art and would have

been obvious to the technically trained worker in the field

of powder metallurgy. He particularly stressed the Gut-

zeit process patent and related article as prior teaching

that a composite of powdered nickel and another element

(phosphorus) would react exothermically when flame

sprayed to aid in bonding the resultant coating to the sub-

strate. And in Mackiw, he saw the very same coated com-

posite particles that are taught in the patents in suit. In

his view, it would have been a simple matter to substitute

aluminum for the phosphorus to achieve a nickel aluminide

coating instead of a nickel phosphide coating. He pointed

out that both Haglund and Bradstreet disclosed the use of

fine aluminum particles to produce an exothermic reaction

which would generate additional heat during flame spray-

ing to aid in bonding the sprayed material. He found

nothing unobvious or unexpected about the self-bonding of

a coating to a substrate. The fusing or alloying of one

metal with another, he testified, was simply the known

metallurgical result of the application of enough heat to

bring it about.

In view of Dr. Grant’s undoubtedly eminent teaching

and other qualifications in the field of metallurgy, Metco

25. Dr. Nicholas J. Grant has been a professor of metallurgy and

material science at the Massachusetts Institute of Technology since

1945, and since 1968 has been Director of its Center for Material

Science and Engineering. He holds the degrees of B.S. in metallurgy

from Carnegie Technical Institute and of Sc.D. in metallurgy from

M.I.T. Prior to his teaching career he was a metallurgist for Bethle-

hem Steel Company and subsequently held executive positions in a

research laboratory and an industrial company. Commencing in

1947 he has been retained as a consultant by some 24 leading in-

(footnote continued on next page)

A39

Appendix A

challenged the validity of his conclusions as to obviousness

by pointing out that he was admittedly a scientist, not

involved with flame spraying except as an observer in con-

nection with some of his consulting work. Dr. Grant ac-

knowledged he has authored no writings on the subject nor

has he ever had occasion to flame spray any of the mate-

rials about which he had testified. He also conceded he

had no knowledge that any of the materials referred to in

the prior art patents had ever been used commercially or

were in fact self-bondings as he himself had defined the

term.”*

As already noted, none of the prior art patents relating

to flame spraying claimed to disclose a self-bonding mate-

dustrial corporations, such as Corning Glass Works, Reynolds Metals

Company, Kennecott Copper Company, Monsanto, Jones & Laughlin

Steel Corporation, Boeing Aircraft Company, Raytheon and others,

and also for the Oak Ridge National Laboratory and the Aberdeen

Proving Grounds. . He is also a member of some 14 government ad-

visory committees concerned with technical matters. He holds 25

United States patents and numerous foreign patents, many relating

to the field of powder metallurgy. He has authored over 270 pub-

lications in U.S. and foreign journals, numerous book chapters, and

is co-author of “Behavior of Materials at Elevated Temperatures,”

M.I.T. Press, 1965. A list of professional societies of which he is

a member and awards he has received are found in a more complete

statement of his qualifications in evidence as PX 8.

26. To establish that such prior art materials were not in fact

self-bonding, Metco noticed and conducted a series of inter partes

tests (Tr. 1640-41) in which the materials were fabricated and

sprayed on test panels. Plaintiffs chose not to participate in the

tests but conducted cross-examination of Metco’s Dr. Herbert S.

Ingham, Jr., who described the tests made and offered in evidence

the respective test panels. Tr. 1640, et seq) DX KA, KB, KE-i,

KE-4, KE-3, KE-8, KE-6, KE-7. In view of the controversy which

arose over whether the spraying was conducted with due regard to

parameters, the court did not take them into consideration in reach-

ing its decision with respect to the validity of the patents in suit.

A40

Appendix A

rial in the sense of one requiring no prior preparation of

the surface to be coated.** Dr. Grant found it necessary to

read such terms as ‘‘coherent coating,’’ ‘‘adhesion,”’

‘‘chemical bond,’’ and ‘‘ wetting’’** appearing in those pat-

ents as equivalents of ‘‘self-bonding.’’ Bleakley (1941),

however, required that the aluminum powder or other

‘‘thermit’’? mixtures used as a flux or heating agent to

bring the substrate to ‘‘bonding temperature’’ be applied

in dry or paste form to the surface and separately ignited

by the flame issuing from the nozzle of the flame spray

equipment. Montgomery (1956), while referring to ‘‘an

alloying reaction between the metal coating and the metal

base,’’ strongly recommended that the ‘‘substrate be sand-

blasted before applying the coating.’’ Bradstreet (1959)

similarly recommended that the substrate surface be ‘‘sand-

blasted prior to application of the flame spray coating.’’

Gutzeit (1959) also recommended ‘‘preliminary grit blast-

ing of the surface.’? Haglund (1960), which was not before

the patent examiner, was concerned only with the penetra-

tion or dissipation of a surface film of silicon dioxide inter-

fering with the spraying of molybdenum dicilicide and is

without relevance here. Shwayder (1962) required heating

of the ‘‘workpiece’’ (substrate) in order to accomplish the

desired hard surfacing by spraying tungsten carbide.

27. Co-patentee Shepard’s prior molybdenum wire patent could

not be relied upon as prior art, although it was a self-bonding ma-

terial, because the self-bonding effect was entirely due to the unique

characteristics of molybdenum, which, in any event, was not a metal

but a refractory-type material.

28. “Wetting” is a term of art denoting the ability of melted ma-

terial to penetrate a metallic surface so as to fuse or alloy with it.

A41

Appendix A

Faced with the foregoing prior art, it is difficult to be-

lieve that one reasonably skilled in the art would have

found it obvious to combine their teaching into the concept

or reality of a self-bonding flame spray material as taught

in the claims in suit. On the contrary, ‘‘[rjather than

serving to point the way to innovation * * * [such} teach-

ings would tend to discourage one skilled in the art from

investigating the methods ultimately used’’ by Dittrich to

make a combination of nickel-aluminum powder self-bond

to an unprepared surface. See Shaw v. E.B. & A.C. Whit-

ing Company, 417 F.2d 1097, 1104, 163 USPQ 580, 585-587

(2 Cir. 1969).

With greatest respect for the opinions of Dr. Grant as

a scientist and teacher, the court is unable to find that a

self-bonding coating can be seen in the prior art as an obvi-

ous consequence of the exothermic reaction of nickel and

aluminum. Indeed, Dittrich’s own early work, supra p. 14,

et seq., on which plaintiffs rely as prior art, demonstrated

that in practice exothermic reactions between nickel and

aluminum occur only under certain conditions, see PX 16,

and that powder mixtures of those metals do not form a

self-bonded coating when flame sprayed. PX 33, PX 6, pp.

89-90. Nor was it possible to form bonded nickel aluminide

coatings on molybdenum steel sheet by spraying layered

coatings of nickel and aluminum and applying subsequent

heat treatment. PX 16, 33. These early failures cannot be

attributed to lack of ordinary skill, since the work was un-

dertaken with technical laboratory personnel of Climax

Molybdenum Corporation, a leading company in the field

of metals.

A42

Appendia A

As Metco consistently stressed throughout the patent

prosecution, the selection of the component metals and the

nature of their physical association in composite form was

the critical factor in producing a superior and unexpected

self-bonding flame spray material. Dittrich was without

doubt the first to recognize, develop and adapt the concept

of coated or clad powder particles for use in flame spraying

to achieve a self-bonded surface coating without prior prep-

aration of the substrate. Contrary to plaintiffs’ assertions,

the result was both ‘‘synergistic’’ and unexpected. It was

synergistic in two respects: (1) whereas nicked and alumi-

num powders sprayed separately or combined as a mixture

did not bond, they unfailingly did so when sprayed in the

‘‘composite’’ form taught by the patents; and (2) when so

sprayed they formed a firmly bonded coating having greater

oxidation resistance than the component metals possessed

cumulatively.

That the result was unexpected is apparent from the

unusual behavior of the composite particles during spray-

ing. As Dittrich noted in his paper for the American

Ceramic Society, PX 40, sprayed metal powder particles

normally reached their peak temperature in the hottest part

of the spray gun flame and then decreased in temperature

as they traveled away from the nozzle. The patented com-

posite powders, in contrast, did just the opposite by in-

creasing their temperature as they traveled toward the sub-

strate and away from the hottest zone of the combustion

flame. The physical association of the component metals

in ‘‘composite’’ form would therefore appear to be the

critical factor in controlling their exothermic reaction so

as to generate the necessary additional heat at the right

moment to bond the coating to the surface.

A43

Appendix A

That Dittrich thought Mackiw’s process might be use-

ful in the commercial preparation of such self-bonding

flame spray powders or that they now appear to be simple

compositions of well known elements did not render them

obvious. The court may not indulge in hindsight to deter-

mine whether an unexpected result was obvious.

‘“‘The issue * * * is not what the patentee expected to

produce but what the hypothetical person ‘having ordi-

nary skill in the art’ would expect to develop if he had

thought about the problem [citations omitted]. In re-

solving the question of obviousness, the judicial view

must not include the knowledge contributed by the

patentee; the teachings of his patent are irrelevant

when determining what ‘would have been obvious’ to

one skilled in the prior art before he created his ‘man-

ufacture’. [Citations omitted.]’’ Shaw v. E.B. & A.C.

Whiting Co., 417 F.2d 1097, 1105, 163 USPQ 580, 586

(2 Cir. 1969).

And as reaffirmed in Carter-Wallace, Inc. v. Otte, 474 F.2d

529, 540, 176 USPQ 452 (2 Cir. 1972), it is also to be ‘‘kept

in mind that such things [chemical compounds] must be

evaluated not alone by the degree of change but also by

reference to the purpose sought to be accomplished,’’ quot-

ing from Schering Corp. v. Gilbert, 153 F.2d 428, 431-32,

68 USPQ 84. 86-88 (2 Cir. 1946). That principle is equally

applicable here, for metallurgy is but the chemistry of

metals.

The overriding purpose sought to be accomplished by

the patentees was to develop a flame spray powder that

would self-bond as sprayed, as did molybdenum wire, that

would overcome the latter’s disadvantages, and that would

provide for sprayed coatings the superior oxidation resist-

A44

Appendix A

ance and other qualities molybdenum lacked. That this was

in fact accomplished by the patented powders is shown by

their immediate commercial success upon introduction to

the trade. During the first full year of sale over 50,000

pounds of the Metco 404 powder were sold and eventually

it replaced molybdenum wire to a large extent. Not only

did the nickel-aluminum material displace molybdenum in

existing flame spraying utilizations; it also opened up new

areas of application where the sprayed part was to be used

at elevated temperatures, as for example in the aerospace

fields. While not controlling on the issue of patentability,

such conspicuous commercial success in a highly technical

and skilled field is a strong indication that the patented flame

spray materials constituted a significant, unexpected and

unobvious improvement in the art. See International Nickel

Co. v. United States, 175 USPQ 209, 213 (Ct. Cl. 1972).

On the evidence before the court—much of it of ante

litem motam and documented character—the conclusion is

inescapable that the flame spray materials described in the

515 patent constituted not only a ‘‘new and useful * * *

composition of matter’’ but also one which would not ‘‘have

been obvious at the time the invention was made to a per-

son having ordinary skill in the art.’’ 35 U.S.C. §§101, 103.

Plaintiffs’ final argument that the patents simply claim

a new ‘‘use’’ for ‘‘old’’ materials is therefore unavailing.

They ignore the fact that the invention is not merely a

combination of familiar elements, i.e., nicked and aluminum

powders. It is the manner of their relationship—the ‘‘com-

posite’’ form—which produces the new and unexpected re-

sult of self-bonding and makes the combination greater

A45

Appendix A

than the sum of its parts. None of the prior art patents

claim or disclose an equivalent result.

The situation here is not unlike that in Shaw v. E.B.

& A.C. Whiting Company, supra, where the invention coa-

sisted of an artificial filament manufactured from thermo-

plastic polymer, a very familiar substance. Such filaments

were adaptable for brush and broom bristles and could be

readily produced in various shapes by passing them through

an extrusion die having an orifice of the desired configura-

tion. Shaw obtained a patent on a cruciform or Y-shaped

filament which not only gave it a high degree of stiffness

and reduced production costs, but also a desirable linear

orientation of the polymer molecules in the filament. Prior

patentees of different shaped polymer filaments had indi-

cated that linear orientation could not be accomplished by

forming dies.

The court of Appeals in reversing the district court’s

contrary conclusion held that Shaw’s filament was both

novel and unobvious. The court noted that ‘‘[t]he district

court failed to evaluate the problem posed by the prior art

and appears to have relied on the proposition that, as

Shaw’s solution to the problem seemed a simple one, his

filament was an obvious outgrowth. The simplicity of an

invention or an improvement thereof is not, however, the

test of its obviousness.’’

Painstaking review of the extensive fire wrapper his-

tory of the patents in suit persuades the court that plain-

tiffs have done little more than repeat every argument

made by a series of examiners during the patent prosecu-

tion, which eventually resulted in the issuance of the pat-

ents in suit. This included the oft-repeated argument that

A46

Appendia A

the invention was obvious in light of the prior art. As

Metco points out, the normal presumption of patent valid-

ity under 35 U.S.C. §282 is enhanced in such a situation.

Rich Products Corp. v. Mitchell Foods, Inc., 357 F.2d 176,

181, 148 USPQ 522, 525-526 (2 Cir. 1966); Georgia Pacific

Corp. v. United States Plywood Corp., 258 F.2d 124; 118

USPQ 122 (2 Cir. 1958). Plaintiffs had the burden of pro-

ducing clear and convincing evidence of patent invalidity

and this they have failed to do.

The court finds and concludes that the invention de-

scribed in the ’515 patent would not be obvious to persons

skilled in the art and that it taught a wholly new concept

for flame spraying materials, which applied successfully—

where others had failed—the principle of exothermic reac-

tion to produce self-bonding characteristics in sprayed

coatings. The °515 patent is therefore held to be valid.

In addition to the contentions already discussed, plain-

tiffs challenge the validity of the ’248 patent on the further

ground that the claims, n. 3 supra, are unpatentable as a

matter of law. Relying on In re Kanter, 399 F.2d 249, 158

USPQ 331 (C.C.P.A. 1968), plaintiffs argue that the flame

spray process referred to in Claim 1 of the ’248 patent is

acknowledged in the specifications to be the ‘‘conventional”’

process for applying a metal coating to a surface. Plain-

tiffs maintain that under Kanter to support patentability,

the process itself must be novel and unobvious. Any ‘‘un-

ique’’ qualities of the coating, they argue, inhere in and

result from the flame spray material, not the spraying

process. .

While the argument has surface plausibility, a close

reading of Kanter makes clear that the language plaintiffs

A47

Appendix A

rely on was applied to a totally different situation. The

invention disallowed in that case consisted of ‘‘the process

of forming an adherent, silicon-containing coating (‘case’)

on ferrous metal articles.’’ 399 F.2d at 250. Kanter’s

claims had been allowed by the Patent Office on the new

and unobvious ‘‘product’’ he had discovered, namely, a

silicon-containing case which did not separate from its iron

or steel core as a result of spalling. As the court noted,

‘‘{Kanter] has achieved this new product by performing

an old process on a starting material, or base metal alloy,

not previously used in the process. * * * Selection resulted

in a new, useful, and unobvious product on which claims

have been allowed but it did not, in our view, result in either

a new or unobvious process.’’ 399 F.2d at 251, 158 USPQ

at 333. The ‘‘starting material’’ referred to, however, un-

like the powders here, was really the end product itself;

i.e., the patentable discovery consisted of Kanter’s recog-

nition that spalling did not occur when the core article on

which the coating was formed had a stable body centered

cubic crystal structure.

Here, the ’248 patent in Claim 1 is directed to ‘‘the im-

provement [in the flame spray process] which comprises

passing the heat-fusible material into said [heating] zone

in the form of a composite comprising at least two distinct

components unalloyed together as a single alloy and in

proportion and form sufficient to exothermically react with

each other at the temperature developed in the heating

zone. * * *’? PX 12. A ‘‘new and useful improvement’’

of a process is, of course, patentable. 35 U.S.C. 4101. The

‘*process’’ disclosed in the ’248 patent is not simply the

operation of a flame spray gun but the application of a

A48

Appendix A

coating in a manner which will cause it to self-bond as

sprayed to the surface being coated.

In Application of Kuehl, 475 F.2d 658, 177 USPQ 250

(1958), the Court of Customs and Patent Appeals held in

an analogous situation that the patentability of a process

in these circumstances must, under 35 U.S.C. §103, be

judged as a whole, which includes the unobviousness of a

separately patented component of the process. Id. at 663,

177 USPQ at 253-254. In Kuehl a patent had been granted

on a novel zeolite composition but claims directed to a

hydrocarbon conversion process involving the use of the

zeolite as a catalyst to crack hydrocarbons had been re-

jected on the ground of prior art disclosing the use of simi-

lar zeolite catalysts.

Pointing out that the novel catalyst produced a result

in the claimed process that was not predictable until Kuehl

had made his invention, the Court held it was error for the

Examiner to require a separate showing of unexpected re-

sults from the process as distinguished from the catalyst

itself. Holding that ‘‘it was not necessary to show un-

expected utility in order to show unobviousness,’’ the Court

concluded :

‘‘(T]t is in the public interest to permit appellant to

claim the process as well as the product. The result

is to encourage a more detailed disclosure of the spe-

cific methods of using the novel composition he has in-

vented in order to have support for the process claims.”’

475 F.2d at 666, 177 USPQ at 256.

This is the very situation presented here.

Applying the Kuehl standard, the ’248 patent was prop-

erly granted and is held to be valid, especially when the

A49

Appendia A

claims were separately filed at the direction of the Patent

Office. The process patent does not increase the scope of

patent protection, since the patentees would under the 515

patent have the right to exclude others from making, using

or selling the flame spray materials disclosed.

We now turn to the question of whether or not the plain-

tiffs’ accused powders are in fact virtual duplicates of the

nickel-aluminum compositions disclosed in the patents in

suit.

Infringement

On its counterclaim for infringement, Metco had the

burden of proving that plaintiffs’ accused powders infringe

the patents in suit. Philip A. Hunt Co. v. Mallinckrodt

Chemical Works, 72 F.Supp. 865, 873-75 USPQ 122, 129

(E.D.N.Y. 1947), aff’d on other grounds, 177 F.2d 583, 83

USPQ 277 (2 Cir. 1949); Olsen v. United States Gypsum

Co., 205 F.Supp. 268, 273 (E.D.N.Y. 1960); Deere & Co. v.

Sperry Rand Corp., 322 F.Supp. 397, 398, 168 USPQ 150,

151 (E.D. Cal. 1970).

Metco’s position basically is that the burden is met by

plaintiff Eutectic’s concession that its Exotee powder is

substantially identical in composition with Metco’s 450

powder, and the further stipulation that Exotec and plain- :

tiff Metallizing’s Moguloy M-55 are identical, that Xuper-

Bond is virtually identical wii) Exotec except for a small

amourt of undisclosed additive, and that Durotec consists

of 10% of Exotec and 90% of a nickel-based self-fluxing

alloy. Tr. 257, 258-61; DX CD, DX CY, p. 4.

There is no question that both Meteo 450 and Exotee

are composed of core particles of nickel coated with finely

A50

Appendix A

divided aluminum powder in a phenolic binder, and in the

same proportions of approximately 5 weight percent alum-

inum and 95 weight percent nickel. Metco maintains that

Exotec and Moguloy M-55 are made and used precisely in

accordance with Example 31 found in both the ’515 and

248 patents. PX 11, col. 13, PX 12, col. 13. It points to

the fact that Exotec is labelled as a ‘‘Self-reacting compo-

site powder for bond coat’’ and that Moguloy is described

as a ‘‘Nickel-Aluminum SELF-BONDING POWDER.’’

DX KH, DX KK.

The difficulty with Metco’s position on infringement is

that Example 31 calls for a materially different composition

of nickel and aluminum than the 95-5 formula employed in

its 450 product and the accused powders. The standard for

gauging infringement is not a product made by the pat-

entee allegedly under the patent but the language of the

claims themselves as they may fairly be interpreted by

resort to clarifying descriptions found in the specifications

and drawings. See Maclaren v. B.I.W. Group Inc.,

F.2d (2 Cir. 1976), slip op. 3777 at 3785-86. The four

claims in issue, n. 3, supra, do not spell out specific compo-

nent proportions; one must look to the specifications and

examples for such information. Thus Example 31 de-

scribes a flame spray powder consisting ‘‘of approximately

15 weight percent aluminum and 85 weight percent nickel’’

(PX 11, col. 13, lines 74-75)—a significant difference in

proportion, which goes to the very heart of Dittrich’s

claimed invention. Metco’s own 450 powder does not con-

form to Example 31 propostions nor is it within the scope

of the claims in issue when read in light of the specifications

defining the nature of the invention.

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A51

Appendix A

Three of the four claims in issue—claim 4 of the ’515

patent and claims 1 and 4 of the ’248 patent—use the term

‘composite’? in describing the novel flame spray material

claimed. Claim 14 of the ’515 patent does not. It is that

claim which Metco relates to Example 31 in contending that

plaintiffs’ accused powders infringe.

Claim 14 of the ’515 patent, which omits the term ‘‘com-

posite,’’ reads as follows:

“14. A flame spray powder in the form of individ-

ual clad particles comprising a nucleus of nickel and a

coating layer of finely divided aluminum particles

bound to the nucleus with a binder and characterized

by the ability of generating heat during flame spraying

which aids in bonding to the surface being sprayed.’’

PX 11, col. 16.

Metco contends that plaintiffs’ accused Exotec, Xuper-

Bond and Moguloy M-55 powders are produced exactly in

accordance with Claim 14 to achieve the same purpose and

effect set forth in the patents.” Since no component pro-

portions are specified, Claim 14 read literally would cover

the 95% nickel-5% aluminum accused powders.

Claim 14, however, cannot be read literally without

destroying the essence of the invention claimed. The in-

vention did not consist of pasting smaller particles of alu-

minum powder on larger particles of nickel powder. In-

deed, the patentees were denied a patent they sought on the

process of coating one metal powder with an adhesive

binder and then coating other metal particles with the sticky

particles. See PX 4, pp. 69-70, 75-76. Such a coating

29. Defendant’s Post-Trial Brief, p. 2.

A52

Appendix A

process was old even before Hensel (1945), supra p. 29.

If binding particles of different metals together with an

adhesive film was all there was to the patentees’ invention,

Claim 14 would clearly have been anticipated and invalid.

But, as already noted, and stressed by the patentees

throughout the prosecution, the critical factor and essence

of the invention was the predetermined relationship be-

tween the component metals which brought about the ex-

othermic reaction during spraying and generated surplus

heat through the formation of an intermetallic compound,

thereby enabling the sprayed material to bond to the sub-

strate.

The gist of the invention is summed up in the term

‘‘composite’’ as carefully defined by the patentees in the

patent specification. Their definition reads as follows:

‘‘The term ‘composite’ as used herein is intended to

designate a structurally integral unit and does not in-

clude a mere mixture of components which may be

physically separated without any destruction of the

structure. Thus, in the case of powder, the term ‘com-

posite’ does not include a simple mixture of individual

granules of the separate components, but requires that

each of the individual granules contain the separate

components which will exothermically react, forming

intermetallic compounds.’’ PX 11, col. 2.

Metco, in resting its infringement claim on Claim 14,

would have the court read it without reference to the defini-

tion of ‘‘composite,’’ although the three other claims in

issue contain that term. While patent specifications cannot

be used to expand the reach of the claims, ‘‘it is funda-

mental that claims are to be construed in light of the

A53

Appendix A

specifications and both are to be read with a view to ascer-

tain the invention.’’ United States v. Adams, 383 U.S. 39,

48-49, 148 USPQ 479, 482-483 (1966). Moreover, even

though ‘‘a patentee may be his own lexicographer * * * [h]e

should not be allowed to stretch his words so that they are

inclusive when infringement is being considered and re-

stricted and narrowed when validity is challenged by dis-

closures of the prior art.’’ Chicago Steel Foundry Co. v.

Burnside Steel Foundry Co., 132 F.2d 812, 814-15, 56 USPQ

283, 285-287 (7 Cir. 1943).

Claim 14 of the 515 patent when read in light of the de-

finition of ‘‘composite’’ and other statements of the pat-

entees in the specifications makes it very clear that the

formation of intermetallic compounds was an integral

means of generating the additional heat needed to produce

the self-bonding effect. This essential element of the

claimed suit simply cannot be dismissed, as Metco contends,

as mere ‘‘theory of the invention.’ The very introduction

of the patents begins with the sentence ‘‘This invention

relates to the flame spraying of exothermically reacting in-

termetallic compound forming composites.’? (Emphasis

supplied.) PX 11, col. 1. Further on in the specifications

the patents instruct that ‘‘[a]s the components, any two

metallics which may be melted together to form an inter-

metallic compound in an exothermic reaction may be used.’’

PX 11, col. 3, emphasis supplied. The importance of inter-

metallic compound formation is further apparent from the

specification requirement ‘‘that the intermetallic com-

pounds formed therefrom [i.e., the component metals] lib-

erate the required amount of heat in the intermetallic com-

30. Defendant’s Post-Trial Brief, pp. 13-17.

A54

Appendia A

pounds-formation and are suitable as components of a

spray coating.’”’ PX 11, col. 3. Finally, the specifications

note that ‘‘while the components are preferably present in

the stoichiometric proportions required for the formation

of the intermetallic compounds, it is, however, possible to

also have an excess of one or the other provided the relative

amounts are sufficient to release the quantities of heat in-

dicated above in the formation of the intermetallic com-

pounds.’’ PX 11, col. 3 (emphasis supplied).

Example 1 of the patents makes clear that at least 10%

by weight of the aluminum powder component is required

with the balance of nickel powder to accomplish the forma-

tion of an intermetallic compound in accordance with the

teachings of the patents. No lesser amount of aluminum

appears anywhere in the patents and, indeed, larger pro-

portions are specified, i.e., 15 weight percent aluminum and

85 weight percent nickel, in Example 31 upon which Metco

relies to establish infringement. The claimed infringing

powders, however, contain no more than 5% aluminum with

the balance being largely nickel except for minor additives.

This is also true of Metco’s 450 nickel-aluminum powder.

Aside from patent terminology, the evidence at trial

convincingly established that the formation of an inter-

metallic compound as a heat generating mechanism could

not be accomplished when only 5% by weight of aluminum

powder is used, as in the case of the accused powders. As

explained by plaintiffs’ expert, Dr. Grant, the constitution

31. “Stoichiometric” is defined as “characterized by or being a

chemical composition of definite proportions by weight * * * [or] a

proportion of substances or energy exactly right for a specific chemical

reaction with no excess of any reactant or pry ** *” (Webster’s

Third New International Dictionary (1971) at 2248.

A55

Appendix A

of binary alloys such as aluminum-nickel under varying

conditions of relative proportion and temperature has been

the subject of close metallurgical study and analysis. The

results have been published in widely accepted treatises,

such as PX 66, and illustrated in a phase diagram relied on

generally by metallurgists. PX 66-A. In order to obtain

an exothermic reaction between nickel and aluminum which

will produce the intermetallic compound nickel aluminide,

Dr. Grant testified, it is necessary to have at least 10%

aluminum in the starting material.

That proportion is not only the minimum reflected on

the phase diagram, PX 66-A, but is also consistent with the

proportions designated in the patents in suit and Dittrich’s

1963 paper, which leaves no doubt that a bonded nickel alu-

minide coating was the desideratum sought by the patented

invention. PX 40. As Dittrich there pointed out, ‘‘[t]he

formation of the nickel aluminides from the chemical com-

bination of nickel and aluminum is accompanied by the

release of considerable heat.’’ PX 40, p. 493. Dittrich was,

of course, then speaking of the nickel-aluminum composite

powder illustrated in Fig. 1 of the ’515 patent—an alu-

minum core surrounded by a sheath of nickel—in which the

aluminum content was 16 to 18% by weight as described

in Example 1. PX 11, col. 6.

When only 5% aluminum is used, Dr. Grant testified, the

resulting reaction falls outside the range of intermetallic

compound formation, as illustrated on the phase diagram,

and heat is generated by an oxidation reaction. The patents

in suit expressly distinguish the patented ‘‘composites”’

from ‘‘materials in which heat is generated by a reaction,

such as an oxidation reaction, in which a foreign and non-

metallic element is introduced. * * *”? PX 11, col. 6. Al-

A56

Appendia A

though, as Dr. Grant explained, the reaction between alu-

minum and oxygen is also exothermic in nature, an end

result is not only the generation of intense heat, up to

400,000 calories, but also the production of aluminum oxide.

Dittrich, the co-patentee, corroborated Dr. Grant by agree-

ing that if the heat-generating mechanism is an exothermic

oxidation rather than intermetallic, then it is not within the

terms of the patent. Tr. 1172. His view of the nature of

the invention was in accord with statements in the final 515

patent application pointing out that ‘‘proportions which

will not so react [i.e., to form an intermetallic compound]

are, of course, not included within the scope and terminol-

ogy of the claims.’’ PX 5, pp. 70-71.

Metco sought to avoid these patent limitations and over-

come plaintiffs’ evidence by attempting to show that nickel

aluminide—a compound which could only be formed by an

intermetallic exothermic reaction—was in fact present in an

Exotec sprayed coating.

During trial, Metco’s Dr. Ingham had flame sprayed a

mild steel panel with Exotee powder, using plaintiff Eu-

tectic’s Rototee gun. The sprayed panel, DX LF, was sub-

jected to an x-ray diffraction examination by Metco’s ex-

pert, Dr. Benjamin Post.** The results of the x-ray scan

32. Dr. Post is Professor of Physics and Chemistry at the Poly-

technic Institute of New York and holds his Ph.D. degree in chem-

istry from that institution (formerly Polytechnic Institute of Brook-

lyn}. One of his major fields of interest is x-ray diffraction. He

is a member and has held office in such professional associates as

the American Crystallographic Association, American Physical So-

ciety, American Chemical Society and the American Association for

the Advancement of Science. Either alone or with others he has

authored some 89 publications in scientific journals dealing with the

structure of metallic and chemical compounds. His qualifications

are more fully set forth in DX JA.

A577»

Appendix A

were recorded on a stylus graph, DX LG. Interpreting the -

tracings on the graph, Dr. Post testified he observed the

indicia of three elements in the test coating: nickel, alumi-

num oxide and ‘‘a distorted nickel lattice, which is defi-

nitely—contains some reaction product.’? Tr. 1301. In

his opinion, the reaction product was ‘‘an aluminide of -

nickel.’’ Tr. 1304. That opinion lost considerable force,

however, when Dr. Post later stated that the NisAl com-

position he saw on the graph did not have ‘‘too much

meaning’’ because the sprayed test panel did not conform

to ‘‘academically approved procedure.’’ Tr. 1305-06.

Moreover, he was unable to quantify the nickel aluminide

he described other than to say it was a ‘‘small amount.”’

Tr. 1345.

The vulnerability of such testimony became all the more

apparent from an ante litem engineering report by Frank

N. Longo, a Metco research engineer. PX 43. That report,

copyrighted 1970 and entitled ‘‘Metallurgy of Flame

Sprayed Nickel Aluminide Coatings’’, endeavored to sup-

ply answers to the nature of the coating structure and its

bond to the coated surface. The study reported both metal-

lographic examination of sprayed coatings and x-ray dif-

fraction studies. With respect to the latter, Longo’s con-

clusion was that ‘‘x-ray analysis cannot distinguish

between Ni, NisAl or the solid solution of aluminum in

nickel.’’ PX 43, p. 4. His ultimate conclusion was that

Metco’s own 95-5 powder, Metco 450, formed a relatively

soft coating containing approximately 90% nickel and

nickel/aluminum solid solution with only ‘‘minor percen-

tages of non-stoichiometric nickel aluminum NiAl.’’ The

remainder of the coating contained amorphous oxides of

A58

Appendix A

nickel and aluminum. This was to be contrasted with the

composition of the patented 404 powder in which the

sprayed coating contained identifiable nickel aluminide and

combined non-stoichiometric nickel-rich NiAl ranging from

70 to 90%, the remainder being oxides of nickel and alumi-

num. Id. at p. 7.

Metco also attempted to discredit plaintiffs’ aluminum

oxidation proof as being in effect a mere ‘‘theory’’ devised

solely for purposes of this litigation. In support of that

argument, Metco pointed particularly to Appendix V of the

Patel report, PX 15, dated November 7, 1973, in which the

author discussed experimental evidence for the ‘‘ proposed

Al2Os theory of Ni/Al powder bonding [emphasis sup-

plied]’’, as indicative of its post litem character. Other

claimed admissions of plaintiff Eutectic’s personnel are

said to be found in Eutectic’s U.S. patent No. 3,471,310

(1969), DX TY, and in a 1972 application for a patent filed

by Patel and Eutectic’s technical vice president, Joseph

Quaas, DX CS.*

Eutectic’s 1969 patent undeniably contains the state-

ment that the use of a ‘‘resin type’’ coating on the powder

particles disclosed in the patent ‘‘greatly diminishes the

oxidation of such powders’’ as they pass through the torch

flame. DX IY, col. 2, lines 36-46. But it does not prove

that exothermic oxidation is not the heating mechanism.

Nor does a fair reading of the 1972 patent application, in

which Eutectic sought protection for its XuperBond ma-

terial, prove that ‘‘prior art’’ 95-5 nickel-aluminum pow-

ders—presumably referring to Metco 450 and Exotec—

33. Defendant’s Post-Trial Brief, p. 18.

A59

Appendix A

generated heat by means of intermetallic exothermic re-

action.

At all events, whatever inferences may permissibiy be

drawn as to the credibility of the defending parties’ posi-

tion, they are unavailing unless the party having the bur-

den of proof—here Metco—comes forward with some solid

proof supporting its infringement claim. Claimed defi-

ciencies in the plaintiffs’ denial of infringement cannot be

relied on to repair obvious weaknesses in Metco’s case.

Those weaknesses appeared in other Metco exhibits and

testimony at trial. For example, DX BK and DX BL were

introduced to show Eutectic’s early interest in testing

Metco’s 450 powder, but they also tended to confirm the

inability of the testing engineers to detect any nickel-

aluminum intermetallic compound in the tested specimens.

Again, Metco criticized Dr. Grant’s reliance on the phase

diagram as support for his opinion that intermetallic com-

pounds could not be formed with only 5% aluminum in the

powder. Dr. Post, however, acknowledged that the phase

diagram was indeed a useful guide not only in the labora-

tory but in industry as well in determining whether or not

an alloy could be formed and the nature of its structure.

Tr. 1312. The use of this same phase diagram was referred

to by Longo in his study. PX 43, p. 1.

‘Such proof would be more likely to persuade a trier of

the fact that the 95-5 powder composition formed a coating

which was quite different from that of the 404 powder and

accomplished its bond effect by a different means. In any

event, it would not persuade a trier of the fact that Metco

had sustained its burden of showing differently. This is

especially so when Longo’s study points out that metal-

A60

Appendix A

lographic examination of unetched coatings formed by

Metco 450 ‘‘show none of the characteristic gray and blue

colors indicative of non-stoichiometric NiAl. Microhard-

ness verifies the absence of NiAl. * * *’’ PX 43, p. 4.

Nor is the balance of proof tipped in Metco’s favor by

Dr. Ingham’s calorimetric tests which purported to demon-

strate that in an atmosphere free of oxygen the plaintiffs’

accused powders reacted together exothermically and not

by oxidation. Such tests cannot be regarded as proof posi-

tive, however, in view of Dr. Grant’s testimony that enough

oxygen would be contained in the oxide layer on the nickel

and in the moisture content in the heating furnace to pro-

duce an oxidation reaction equal to the reaction illustrated

on Ingham’s chart. Tr. 2184, 2187-88.

The shortcomings in Metco’s proof of infringement are

obvious. They cannot be remedied by arguing that it is

the self-bonding result which matters, not the technical

nature of the exothermic reaction which brings it about.

Such a contention runs squarely afoul of fundamental prin-

ciples recently reaffirmed in Maclaren v. B.I.W. Group,

supra. While patent claims may be construed in light of

the specifications ‘‘the scope of protection granted by a

patent is defined by the language of its claims rather than

by its title, specifications, exhibits or by the commercial

embodiments of the claimed invention.’’ Id. at slip op.

p. 3785.

The term ‘‘self bonding’’ is nowhere to be found in the

claims in issue here and thus such a result cannot itself

be the subject of a patent monopoly. The accused powders

cannot be held to infringe simply because they self-bond.

It was incumbent on Metco to show by a preponderance of

A61

Appendix A

evidence that they achieved that result ‘‘in substantially

the same way’’ as taught by the patents. Sanitary Refrig-

erator Co. v. Winters, 280 U.S. 30, 42, 3 USPQ 40, 44-45

(1929). This Metco failed to do for the reasons previously

noted.** The accused powders are therefore held not to

infringe the claims in suit.

Judgment is directed declaring that the patent claims

in suit are valid as construed herein but are not infringed

by plaintiffs’ accused powders, and dismissing defendant’s

counterclaim on the merits. Submit proposed forms of

judgment on notice.

34. The court has noted but rejects Metco’s suggestion that for-

mer Metco employees, including Mahesh S. Patel, see DX DT, DU,

who later entered the employ of plaintiff Eutectic, brought with them

knowledge of the patented flame spray materials in violation of their

secrecy agreements with Metco and thus paved the way for the

claimed infringement. Also considered was Metco’s attack upon the

credibility of Dr. Grant. Even though the court did not accord great

weight to Dr. Grant’s views concerning the prior art, his expertise in

the field of metallurgy was beyond question and the substance of his

testimony far more consistent with other evidence than that of Dr.

Post.

A62

Appendix B

Opinion of the United States Court of Appeals

for the Second Circuit

Timbers and Van Graaferland, Circuit Judges,

and Owen, District Judge

(Opinion written by Judge Owen)

COURT OF APPEALS

Sreconp CIRcuIT

—_—__ Ee

Evtectic Corporation, et al.

v.

Metco, Inc.

Nos. 76-1490 and 76-7514

Decided Feb. 6, 1978

So OO

This is an appeal from a determination of the District

Court for the Eastern District of New York, reported at

418 F.Supp. 1186, 191 USPQ 505 (1976), that certain pat-

ents are valid but not infringed. The patents are two and

involve the art of spraying various bi-metallic composites

from a flame spray gun onto a metal surface, much as paint

is sprayed. United States Patent No. 3,322,515 (the ’515

Patent) covers the flame spray materials in powder or

wire form.' No. 3,436,248 (the ’248 Patent) covers the

1. Many different pairings of metals are set forth as achieving

the desired self-bonding effect, with varying bonding strengths being

achieved by different percentage relationships of the metals.

A63

Appendix B

process of spraying the materials described in the ’515

Patent.

The patents teach the artisan that various specified

pairings of metals (e.g., nickel and aluminum) prepared

and sprayed under appropriate circumstances, will cause

a firm, self-bonding coating upon an unprepared metal

surface. Essential to this result, the patents teach, is the

generation of a certain minimum amount of additional heat

during the spray flight. This is caused by the two metals

—already heated to a reaction point by the flame spray gun

—thereafter interracting to form intermetallic compounds,

and, in the process, giving off heat. The artisan, according

to the patents, may vary the proportions in the various

pairings according to what is desired as the coating, so

long as the proportions selected produce the required ad-

ditional heat in spray flight. There are standard metal-

lurgical diagrams to which proportions will produce the

required heat and which will not, and the ’515 Patent pro-

vides some examples.

Only one spray powder, consisting of essentially 95%

nickel and 5% aluminum by weight, is involved here be-

cause of its substantial commercial success. Hach particle

of the fine powder has a nickel nucleus surrounded by even

finer aluminum particles bound to the nucleus by resin.?

Plaintiffs are the claimed infringers. They are the

Eutectic Corporation and New Metals Corporation, manu-

facturers of products in this general field, and Metallizing

Company of America, a manufacturer and seller of flame

spraying equipment and a purchaser for resale of Eu-

2. Certain of the powders in suit have small amounts of addi-

tives. These additives have no relevance to the issues before us.

A64

Appendiz B

tectic’s powders. Plaintiff Eutectic markets flame spray-

ing powders under the trade names ‘‘ Exotec,’’ ‘‘ Xuper-

Bond,’’ and ‘‘Durotee.’’ Plaintiff Metallizing markets Eu-

tectic’s powder as ‘‘ Moguloy M-55.”’

Defendant Metco, Ine. is the owner of the patents in

question, aud markets its successful ‘‘Metco 450’’ there-

under. It is conceded that the Eutectic and Metallizing

powders are nickel-aluminum compositions substantially

identical to the Metco ‘‘450’’ powder.’

Plaintiffs in this action sought a declaratory judgment

of non-infringement and invalidity of the patents. De-

fendant Metco counterclaimed, charging infringement by

each plaintiff. The District Court found validity, but

concluded the patents were not infringed. All parties have

appealed.

The history of this field is instructive. Flame spraying

of metal onto a metal surface is usually accomplished by

placing flame spray material in either rod, wire or powder

form into a flame spray gun in which, by gas-oxygen re-

duction or electric are flame, it is reduced to a molten or

semi-molten state and thereupon propelled onto the surface

to be coated. From the turn of the century to the 1940’s,

the only practicable method of assuring some degree of

bonding between the coating and the surface was to me-

3. Obviously, if the District Court’s conclusion of non-infringe-

ment by the plaintiffs is correct, Metco’s own “450” is not within

its own patents.

4. This litigation had its beginnings in the Northern District of

Illinois in an action by Metco against Metallizing because of the

latter’s sale of ‘“‘Moguloy M-55.”

5. Jurisdiction is based upon the patent laws of the United

States. 28 U.S.C. §1338.

A65

Appendia B

chanically roughen the surface to provide crevices and

undercuts into which the sprayed molten particles would

enter, forming a mechanical interlock. In the mid-1940’s,

a substantial advance was achieved when one Arthur P.

Shepard, a Metco engineer and deceased co-patentee of

the patents in suit, discovered that molybdenum, when used

as a flame spraying material, would self-bond on a clean

unprepared surface. Shepard was granted a_ patent

thereon.

For the next fifteen years molybdenum wire was the

only widely-used material in the flame spray field, notwith-

standing a number of disadvantages. It was difficult and

messy to use, caused wear on equipment because of its

hardness, could only be applied at a relatively slow spray

rate, would not satisfactorily bond to certain surfaces, re-

quired a high degree of operator skill, and could not be

used where the part being sprayed would subsequently be

subjected to use at temperatures above 600 degrees, at

which the molybdenum would oxidize and deteriorate, de-

stroying the bond. Thus, there remained during those

years a clear need to be filled in the flame spraying art to

overcome the problems associated with molybdenum.

As events would have it, this need was also met by a

Metco engineer, Ferdinand J. Dittrich, who, working under

Shepard, discovered the solution in a powder, each particle

having a nickel core surrounded by finely divided aluminum

particles bound together by a resin. This powder, when

heated to a certain temperature in a flame spray gun, would

thereafter exothermically react—that is, each element

would chemically react with the other, releasing additional

heat during the spray’s flight from the tip of the gun to

A66

Appendiz B

the surface being coated. This heat-creation during flight,

Dittrich discovered, would cause a secure bonding even to

a smooth, clean, unprepared surface. To phrase it in the

approximate language of one of the claims of the °515

Patent, the powder had the ability of generating heat dur-

ing flame spraying which aided in bonding to the surface

being sprayed. Clearly, the key to this generation of heat

was to be found in the percentage relationship of the com-

ponents and the arrangement of each particle.

The plaintiffs, at the outset, attack the District Court’s

conclusion of patentability. They claim that all the basic

elements of the Metco patents are found in the prior art.

Clearly, the prior art discloses a number of elements in-

hereui in and essential to the Metco patents such as the

prineiples of exothermic reaction and intermetallic com-

pound formation between certain metals. A 1958 patent

to one Mackiw discloses a method of coating particles of

one metal with another. Machiw’s object, however, was

essentially to develop an improved process for pressing

or eompacting metal powder into shapes difficult to manu-

facture by conventional casting methods, and, we note, the

powders in suit were the product of Dittrich’s specifica-

tions, not Mackiw’s. A Gutzeit patent (1959) teaches the

melting of a nickel-phosphorous composite in a flame spray

gun but merely speaks of spraying ‘‘the resulting melt’’

upon a metal surface.

What the prior art does not teach is how, with conven-

tional flame spray equipment, a coating can be made to self-

bond to a clean, smooth metal surface through the use of

strting materials capable of causing an exothermic reaction

isn the spray stream releasing further beat to aid in the

A67

Appendix B

bonding. It is, therefore, the creation of certain additional

heat in the spray flight that is unique and is at the heart

of Dittrich’s invention. Thus, the specific materials and

their use as disclosed are clearly a ‘‘new and useful...

composition of matter’’ in their distinctive arrangement,

function and end result, and therefore patentable under 35

U.S.C. 44101, 102. The conclusion of the court below to this

effect was thoroughly supported by the evidence. 418

F.Supp. at 1196-1201, 191 USPQ 514-519.

Plaintiffs next assert the ‘‘obviousness’’ of the alleged

invention to defeat the patent. See U.S.C. §103. The court

below, however, put the question well: ‘‘ Would it have been

obvious to those [skilled in the art of flame spraying] that

the formation and flame spraying of nickel-aluminum pow-

ders as taught in the patents in suit would produce a self-

bonding coating on a metal substrate that had not been

heated or otherwise treated to receive it?’’ The court found

that it was not, aud we agree. After fifteen years of less

than satisfactory experience with molybdenum, Dittrich

was the first tr recognize, develop and adapt the concept

of coated or clad powder particles for use in flame spraying

to achieve a self-bonded surface coating without prior prep-

aration of the substrate. Further on the question of ob-

viousness, the court below noted that ‘‘[t]he overriding

purpose sought to be accomplished by the patentees was to

develop a flame spray powder that would self-bond as

sprayed, as did molybdenum wire, [and] that would over-

come the latter’s disadvantages. ...’’ ‘That this was

in fact accomplished by Metco’s powder was shown by its

immediate commercial success upon introduction to the

A68

Appendix B

trade. During the first year, over 50,000 pounds were sold

and eventually it replaced molybdenum wire to a large ex-

tent. The court below correctly concluded that the patent

flame spray materials constituted a significant, unexpected

and unobvious improvement in the art. 418 F.Supp. at

1201-07, 191 USPQ 518-24. This finding is amply supported

by the record.

We affirm the well-reasoned determination of the court

below that the patents are valid.

We next turn to the District Court’s conclusion of non-

infringement. The court below held that Metco had not met

its burden of proof on the issue of infringement, and this

conclusion was clearly based on the court’s factual finding

that if the flame spray powder contained less than 10% alu-

minum by weight, there would be no formationn of an inter-

metallic compound as a heat-generating mechanism in ac-

cordance with the teaching of the patent. Consequently,

the plaintiffs’ 5% aluminum powders were necessarily

non-infringing.”

In reaching this conclusion, the court below recognized,

and it is without dsipute, that the claimed infringing pow-

6. Commercial success, while not controlling, is an indication

of significant and non-obvious improvement in the art. See Interna-

tional Nickel Co. v. United States, 175 USPQ 209, 313 (Ct. Cl.

1972). See also Maclaren v. B-I-W Group Inc., 535 F.2d 1367,

1376, 190 USPQ 513, 520 (2d Cir.), cert. denied, 429 U.S. 1001

192 USPQ 121 (1976).

7. In this regard the court took note of some expert testimony

that while there would be an exothermic reaction in the spray stream,

it would be an oxidation reaction between the aluminum and oxygen

in the air, and that only nickel would be deposited on the spray surface.

A69

Appendia B

ders, while having but 5% aluminum, do fall squarely within

Claim 14 of the 515 Patent, which reads as follows:

A flame spray powder in the form of individual clad

particles comprising a nucleus of nickel and a coating

layer of finely divided aluminum particles bound to

the nucleus with a binder and characterized by the abil-

tiy of generating heat during flame spraying which aids

in bonding to the surface being sprayed.®

However, the court, on the basis of certain examples in the

‘515 Patent® and its understanding of the appropriate metal-

lurgy, read into Claim 14 a requirement of at least 10%

aluminum by weight. While we agree with the court below

that it is appropirate, in certain circumstances, to refer to

other portions of the patent to understand and define its

boundaries, United States v. Adams, 383 U.S. 39, 148 USPQ

479 (1966), we disagree with its finding that a minimum of

10% aluminum by weight is required to generate heat by

means of an exothermic reaction between the nickel and alu-

minum in the formation of an intermetallic compound.

Essential to the determination of the necessary percen-

tage of aluminum required for the appropriate production

of heat is a certain phase diagram, which read together

with an associated graph, shows the amount of heat released

by interaction of nickel and aluminum throughout the entire

8. The court below also found the essence of the ’515 Patent

to be—and there is no question that the alleged infringing powders

are—starting materials capable of generating an exothermic reaction

releasing heat during the spray flight to cause a bond upon the re-

ceiving surface. We agree with this and also agree that one must

focus primarily upon the initial composition of the powders in ques-

tion rather than upon the composition of the coating after spraying.

9. No examples spoke of less than 10% aluminum, and some

spoke of more.

A70

Appendiz B

spectrum of percentage relationships, whether stoichiomet-

ric’ or non-stoichiometric. The court below properly found

the phase diagram to be one relied on generally by metal-

lurgists, and therefore to govern. However, relying upon

an unresponsive and consegently misleading aswer of one

Dr. Nicholas Grant, an expert for plaintiffs, the court

below erroneously concluded from the diagram that a min-

imum of 10% by weight of aluminum was required for there

to be any interaction resulting in the formation of an inter-

metallic compound releasing the necessary heat. However,

examination of the phase diagram itself reveals that there

was confusion below between weight and atomic percent-

ages and that, in fact, according to the diagram, such an

effect will occur with only 5% aluminum by weight.” It

is unquestioned that the patents speak in terms of the

weight of the components, not the atomic percentages.

Indeed, at later points in the trial, Dr. Grant conceded that

5% by weight according to the phase diagram could not

only cause a reaction releasing more than the minimum

10. “Stoichiometric” is defined as “characterized by or being a

chemical composition of definite proportions by weight . .. [or] a

proportion of substances or energy exactly right for a specific chem-

ical reaction with no excess of any reactant or product... .”

Webster’s Third New International Dictionary 2248 (1961).

11. “Q. And what percentage of aluminum is necessary accord-

ing to the phase diagram in order to obtain an intermetallic type

reaction ?

“At least 10 percent, and preferably 15 or more percent if you

want to get a significant heat output, due to the formation of an

intermetallic exothermic reaction.” Joint Appendix at JA 139.

12. The error below stemmed from the fact that the diagram

has two scales along the horizontal axis, one at the bottom for atomic

percent and one at the top for weight. Ten atomic percent of alumi-

num (to 90 atomic percent nickel) is slightly less than 5% alumi-

num by weight.

A71

Appendix B

requirements of heat but also, form some intermetallic

compound.'*

Unquestionably, when the decision of the court below

rests upon an incorrect reading of an undisputed document,

this court is free to substitute its own reading of the docu-

ment. Orvis v. Higgins, 180 F.2d 537, 539 (2d Cir.), cert.

denied, 340 U.S. 810 (1950). Upon a thorough considera-

tion of the record, including Dr. Grant’s own testimony as

to the phase diagram, the conclusion is inescapable that a

13. “Q. And so, would you conclude that the—that in this chart

the 90 shown, the point 9 shown is the atomic percent?

“A. Well, yes, now that we have corroborated this.

“Q. Okay, so that it’s 5 weight percent—right?

“A. We could have saved this had I been told what it was initi-

ally, instead of —

“Q. All right, so that’s 5 weight percent, if we look at the charts

below, we will generate 4,000 calories per gram atom, is that correct?

“A. With reference to room temperature, yes, sir.” Joint A -

dix at JA 272. J i

This testimony is significant in view of the fact that the 515 Pat-

ent states that “[t]he components should release [at least] 3,000

calories per gram atom... .”

14. “Q. So that according to your opinion, with five percent

aluminum on the nickel surface, it is possible for the aluminum to

start to react with the surface of the nickel exothermically and

form into a intermetallic compound?

“A. Yes, it may form a thin film of it. Yes, sir.” Joint Appendix

at JA 284.

Dr. Grant, plaintiff's expert, then went on to state emphatically

that the intermetallic compound thus formed would probably be lost

before reaching the surface by reason of the further diffusion of the

aluminum, and thus no intermetallic compound would be found in

the coating. However, while the 515 Patent envisions that most

pairings of metals, regardless of proportions, will deposit an inter-

metallic coating on the surface, it nowhere asserts that an inter-

metallic compound must be deposited on the surface, it merely

asserts that its formation is the mechanism that generates the re-

quired heat.

A72

Appendix B

mistake was made in the District Court’s interpretation

of this key document, and that the findings and conclusions

based upon it are clearly erroneous. United States v.

United States Gypsum Co., 333 U.S. 364, 395, 76 USPQ

430, 442-443 (1948).

It is also apparent that the court below, in reading a

minimum of 10% aluminum into Claim 14 of the ’515 Pat-

ent from certain examples set forth elsewhere in the patent,

was doing no more than finding what it believed to be ad-

ditional support for the metallurgical conclusion it had

mistakenly reached. Since the extent to which a court may

look to the specifications or examples to limit the claim is

to be determined on the facts in each case. In re Van Lint,

354 F.2d 674, 679, 148 USPQ 285, 288-289 (C.C.P.A. 1966),

in view of what we conclude is the proper reading of the

crucial phase diagram, it becomes inappropriate to treat

the 515 Patent’s examples as some evidence of a limitation

upon Claim 14.

Given all of the foregoing, we conclude that the patents

clearly teach the artisan that a 95% nickel-5%aluminum

powder, prepared and sprayed as described, achieves the

result the patent envisions.** The patents teach the man-

15. Indeed, to the contrary, in one of the affidavits submitted by

inventor Dittrich to the Patent Office in connection with his appli-

cation, he specified combinations of nickel and aluminum in which

the percentage of aluminum for a successful bond ran as low as

2.5%. Joint Appendix at E 790.

16. Dr. Grant contended that the required heat was generated

either by oxidation of the aluminum or by a solid solution heat effect

between the nickel and aluminum, rather than by the formation in

some part of an intermetallic compound. Even if he is correct, this

would not affect the ultimate disposition of this case, for as was

held in Diamond Rubber Co. v. Consolidated Tire Co., 220 U.S.

(footnote continued on next page)

A73

Appendia B

ner of preparation of the powder, they specify the mini-

mum amount of heat that must be generated in flight, and

the artisan, by reference to standard metallurgical charts

and diagrams, can readily ascertain that a 95%-5% ratio

will provide such heat. Thus, the artisan utilizing this

ratio will achieve the result the patent teaches. This is

unquestioned. Consequently, the plaintiffs’ powders con-

sisting essentially of 95% nickel and 5% aluminum are

within Claim 14 of the 515 Patent and Claim 4 of the ’248

Patent.’ They are prepared substantially as taught; they

428, 31 S. Ct. 444, 55 L. Ed. 527 (1911): “[I]f [a patentee] has

added a new and valuable article to the world’s utilities he is entitled

to the rank and protection of an inventor. And how can it take

from his merit that he may not know all of the forces which he has

brought into operation? It is certainly not necessary that he under-

stand or be able to state the scientific principles underlying his in-

vention, and it is immaterial whether he can stand a successful ex-

amination as to the speculative ideas involved .... He must, indeed,

make such disclosure and description of his invention that it may be

put into practice .... This satisfies the law, which only requires

as a condition of its protection that the world be given something new

and that the world be taught how to use it.” Id. at 435-36, 31 S. Ct.

at 447, 448, 55 L. Ed. at 532. Also applicable is Devex Corp. v. Gen-

eral Motors Corp., 467 F.2d 257, 175 USPQ 321 (3d Cir. 1972),

cert. denied, 411 U.S. 973, 177 USPQ 545 (1973). There the

defendant sought to avoid infringement by arguing that the chemical

interactions that occurred during its accused lubrication process were

different from those reported by the patentee. In reversing the

lower court’s holding of non-infringement, the court ruled: “[I]f it

is directly determinable that the two lubricants have essentially the

same components, are applied in the same way and that the results

of their use are essentially the same, the disputation of chemists

about the chemcial interactions that occurred in the processes cannot

be decisive.” Id. at 261, 175 USPQ at 323-324.

17. In practice, the precise ratio of the powders doubtless varies

by some fraction of a percent. Such variation, however, would not

alter the inescapable conclusion that powders in the range of those

at issue in this case are within the scope of the patent. See Inter-

national Nickel Co. v. Ford Motor Co., 166 F.Supp. 551, 558, 119

USPQ 72, 78 (S.D.N.Y. 1958).

A74

Appendia B

generate the requisite heat; and they achieve the same re-

sult. They therefore infringe the defendant’s patents.

The determination of the court below declaring the

patent valid is affirmed. The determination of noninfringe-

ment and the award of costs to plaintiffs is reversed, and

the case remanded for further proceedings not inconsistent

with this opinion.

Appendix C

Section 8, Clause 8. Patents and Copyrights

To promote the Progress of Science and useful Arts,

by securing for limited Times to Authors and Inventors the

exclusive Right to their respective Writings and Discov-

eries ;

AT5

Appendix D

§103. Conditions for Patentability; Non-Obvious

Subject Matter

A patent may not be obtained though the invention is

not identically disclosed or described as set forth in sec-

tion 102 of this title, if the differences between the subject

matter sought to be patented and the prior art are such that

the subject matter as a whole would have been obvious at

the time the invention was made to a person having or-

dinary skill in the art to which said subject matter pertains.

Patentability shall not be negatived by the manner in

which the invention was made. July 19, 1952, c. 950, §1,

66 Stat. 798.

§112. Specification

The specification shall contain a written description of

the invention, and of the manner and process of making and

using it, in such full, clear, concise, and exact terms as to

enable any person skilled in the art to which it pertains, or

with which it is most nearly connected, to make and use

the same, and shall set forth the best mode contemplated

by the inventor of carrying out his invention.

The specification shall conclude with one or more claims

particularly pointing out and distinctly claiming the subject

matter which the applicant regards as his invention.

An element in a claim for a combination may be ex-

pressed as a means or step for performing a specified

function without the recital of structure, material, or acts

in support thereof, and such claim shali be construed to

cover the corresponding structure, material, or acts de-

scribed in the specification and equivalent thereof. July

19, 1952, c. 950, §1, 66 Stat. 798.

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