187 F. 826 | 7th Cir. | 1911
(after stating the facts as above). Authority to grant reissues is now derived exclusively from the statute. R. S. § 4916 (U. S. Comp. St. 1901, p. 3393). And the commissioner goes beyond his jurisdiction' if he grants a reissue for an invention (though conceded to be the invention of the applicant) which is not the same invention that was disclosed and described as the applicant’s invention (not merely that lurked in the drawings or description of the machine as a machine) in the original patent, which, by reason of inadvertence, accident, or mistake, is inoperative to secure the monopoly it shows on its face was intended to be secured. McDowell v. Ideal Concrete Machinery Co. (herewith decided) 187 Fed. 814.
In this case the applicant originally said:
“I have invented certain new and useful improvements in scales; and my preferred manner of carrying out the invention is set forth in the following full, clear, and exact description, terminating with claims particularly specifying the novelty. * * * To this end the invention consists in the details of construction hereinafter more fully set forth and claimed and as shown in the accompanying drawings.”
Then is given a description, following the reference letters of the drawings, from which any one skilled in the art could make and use the improved computing scale. Claim 8 of the reissue, by the same reference letters, simply covers the same improved scale.
A proposal had been made to tender claims for allowance that would be adequate to secure a monopoly of the invention disclosed and described in the specification as the invention of the applicant. The two claims allowed do not fulfill the promise. They are only for combinations of less than the total number of elements in the complete scale and are expressed in general terms. The original patent on its face was therefore inoperative to protect “the details of construction” which the specification had particularly pointed out and which
Did this inoperativeness arise from inadvertence, accident, or mistake? Twenty-seven other claims were presented for allowance during the prosecution of the original application, and the file wrapper shows that the solicitors acquiesced in their rejection. The inadvertence of his solicitors was the applicant’s inadvertence, and might therefore be availed of by him, if it existed. On the other hand, his solicitors’ erroneous judgment in submitting to the rejections is his erroneous judgment, and he would be estopped from presenting any of the rejected claims in an application for a reissue. Yale Dock Mfg. Co. v. Berkshire Nat. Bank, 135 U. S. 342, 10 Sup. Ct. 884, 34 L. Ed. 168; Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U. S. 38, 14 Sup. Ct. 38, 37 L. Ed. 989.
We have examined each of the 37 rejected claims and have failed to find one that would be adequate to secure a monopoly of the De Vilbiss computing scale, that would cover “the details of construction” in which the invention as an entirety resided. We think appellant has put the best foot forward in selecting for comparison with claim 8 of the reissue the following rejected claim:
“3. In a computing scale, the combination with the beam mounted on a fulcrum, the pan or platform, and a link; of the housing having a table provided with a single row of weight units and several rows of price totals, a normally vertical pendulum and normally oblique index hung on a common central pivot, the index having several price per pound figures coacting with the price-total rows on the table, a link pivot rigid with and normally •above said central pivot and with which said link is connected, and means for counterbalancing the link pivot and link and the index, as and for the purpose set forth.”
It will be observed that this rejected claim does not include even in general terms either the dash pot or the tare beam of the improved scale, while the elements that are common to the two are described in broad terms of construction and location in the rejected claim and in specific terms, limited to the construction and location particularly illustrated and described, in the reissue claim. And of course the acquiescence in the rejection of a combination of elements in general terms is not an abandonment of a combination of the same elements limited to specific construction and location, for in the specific construction and location may reside invention.
After the 37 claims were rejected, the solicitors responded:
“In view of the vicissitudes which have attended the prosecution of this case and of the sepeated statements that claims 4 and 5 are considered allowable, claims 1, 2, and 3 (all that then remained of the 27) are erased in order to put the case in condition for immediate allowance.”
This was an abandonment of the subject-matter of each of the rejected claims, but not of the invention as an entirety, for no claim corresponding to the specific details of that invention was ever presented in the original proceedings. The original patent and the file wrapper and contents were on their face sufficient proof that, if a claim adequate to cover the improved scale was ever drawn, it had been omitted, by accident in copying or otherwise, from presentation to the Pat
Was this inadvertence excusable? After the solicitors delivered the patent to their client, they could not be expected to give the matter any further attention. De Vilbiss was a layman and may be supposed to have been inexpert in construing patents. ITe may have rested on the assumption that his solicitors had procured a fully operative patent. How far such a reliance may go generally is not necessary to be determined in this instance. Here the situation is the same as if De Vilbiss had applied for the reissue the very hour the patent issued, for no intervening rights of any sort accrued.
Respecting the other reissue claims, it is sufficient to say that, while the original specification was notice of what the invention as an entirety was, the allowed claims were notice that the invention also covered combinations of less than all the parts; that none of the reissue claims corresponds with the subject-matter of any abandoned claim; and that no reissue claim is broader than the allowed claims.
Concerning the defenses of want of invention, aggregation, and noninfringement, we approve and adopt the opinion of the Circuit Court.
The decree is affirmed.