299 F. 574 | 2d Cir. | 1924
(after stating the facts as above). This is the “branding” patent considered by us in Bird v. Elaborated, etc., Co., 256 Fed. 366, 167 C. C. A. 536. In that case, either by the opinion of Hazel, J., in the District Court, or by our own opinion, we held that the patent now in suit was valid; that we agreed with the exposition of the same subject-matter made in the Seventh Circuit in West Coast, etc., Co. v. Elaborated, etc., Co., 249 Fed. 221, 161 C. C. A. 257. Further, that there was nothing in the prior art, as exemplified by the patents to Lee, Rugen and Abraham, and Hebblewaite and Holt, that furnished any substantial defense to an action on this patent. 256 Fed. 368, 372, 167 C. C. A. 536.
The assignments of error herein assert (1) that defendant has done nothing not substantially disclosed by the 'prior art; (2) that the patent
The third allegation of error rests upon the proceedings in the Patent Office as revealed by the file wrapper. As above pointed out, the specification or disclosure does not confine the proposed product to a coating of soapstone, and the claims originally proposed by plaintiff’s solicitor used such phrases as “a protective coating of fine particles,” “a protective layer of mineral ^particles,” or “areas of mineral particles.” For reasons which do not appear in the contents of the file wrapper, and seemingly as the result of a personal interview between examiner and solicitor, the patent issued with its single present claim as above quoted.
The doctrine invoked by appellant is that stated in Morgan, etc., Co. v. Albany, etc., Co., 152 U. S. 425, 14 Sup. Ct. 627, 38 L. Ed. 500, viz.: That the patentee having presented a claim, and the Office having rejected it, and such rejection having been acquiesced in, the patentee is “es-top^ped to claim the benefit óf his rejected claim, or such a construction of his present claim as would be equivalent thereto.” This is a rule of estoppel, and, like all estoppels, must be interpreted in the light of that 'which was the subject of discussion when estoppel is alleged to have arisen. The objection to the claims as filed made by the examiner rested upon the assertion that “designs made up of granular material” were old in such references as Walter, 268,964. We think it reasonably clear that what the Office insisted on, and what Bird acquiesced in, was the proposition that he should not even seem to claim a roofing of which the design was produced by omitting the surfacing material from certain lines of the as'phaltic coating. There is no evidence that the nature of the surfacing material was ever discussed.
Decree affirmed, with costs.
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