Wagenhorst v. Hydraulic Steel Co.

• Decision Date: 20 June 1928
• Docket Number: No. 4804.,4804.
• Citation: 27 F.2d 27
• Parties: WAGENHORST v. HYDRAULIC STEEL CO. et al.
• Court: U.S. Court of Appeals — Sixth Circuit

27 F.2d 27 (1928)

WAGENHORST v. HYDRAULIC STEEL CO. et al.

No. 4804.

Circuit Court of Appeals, Sixth Circuit.

June 20, 1928.

C. B. Des Jardins and Melville Church, both of Washington, D. C., for appellant.

John F. Oberlin, of Cleveland, Ohio (Baker, Hostetler & Sidlo, Fay, Oberlin & Fay, and Jos. C. Hostetler, all of Cleveland, Ohio, on the brief), for appellees.

Before DENISON and MOORMAN, Circuit Judges, and HICKS, District Judge.

DENISON, Circuit Judge.

Infringement suit on the Wagenhorst patent, No. 1,509,382, issued September 23, 1924, upon a demountable rim for automobile wheels. The patent was based upon a divisional application, filed December 21, 1923, in the course of prosecuting an original application, filed April 2, 1921. The District Court dismissed the bill because he thought the patent invalid, both for lack of invention and because of delay in filing the divisional application.

Since, if the latter reason were sound, the case might well be affirmed on that ground without attention to the former reason, we think it appropriate to consider the effect of this delay. There is no particular statutory regulation as to what may be contained in a single patent application; the inference that one application should be confined to one invention is fair enough, but this does not affect the difficulty of distinguishing between what are, and what are not, parts of the same invention. Any rule on this subject must be largely arbitrary and of convenience. Such rules as have been established do not seem entirely consistent. Method or process, and machine or apparatus, and product or article of manufacture, may be separate inventions, and yet they often have been allowed to be united in one patent. Where a somewhat complex machine or structure includes details of part A and details of part B, and both need not always be embodied, there is no inherent reason why there might not be in one patent a generic claim covering both and specific claims respectively to the two alternative forms; but the practice is firmly established that a single patent may contain the generic and relatively generic claims and a specific claim to one form only of the concrete embodiment.

Accordingly, where the application presents specific claims to alternative forms, the applicant is required to amend by confining his claims in that application to one form and by filing a divisional application for the other form if he wishes to insist upon it. Such a division involves no new matter, and is nothing but a portion of the required amendment. The applicant may retain the generic claim and specific claim A in the parent application and file the divisional application for specific claim B, or he may do the converse, as he prefers. A divisional application is a form of an amendment, and we see no basis for distinction in the principles applicable to a divisional application and to any other kind of an amendment. If what is technically new matter is embodied in either, that new matter must be supported by a new affidavit, and will take its filing date only from that embodiment. As to anything which is not new matter, the application, whether parent or divisional, continues to have the benefit of the first filing date.¹

The patent statute prescribes that the right to a patent is abandoned and the patent is invalid if the patentee, even though the first inventor, has delayed his application until two years after the invention has been put into public use or has been described in any printed application. By analogy to this statutory rule, the Supreme Court long ago held that a delay of two years in filing a reissue application, for the purpose of broadening an issued patent, would be regarded as a fatal delay; and it is here immaterial whether the fatality of the delay was found in abandonment or in estoppel by the dedication to the public of what was shown but not claimed in the original. In Chapman v. Wintroath, 252 U. S. 126, 40 S. Ct. 234, 64 L. Ed. 491, we find express consideration of a divisional application. It appeared that the applicant had shown but not claimed specific form A. Some one else filed a junior application, showing and claiming form A. Whether by oversight in the Patent Office or because of the then existing rules, no interference was declared, and the patent issued to the junior applicant. Twenty months thereafter the senior applicant filed a divisional application claiming the same specific form, and an interference was declared with the junior applicant, who had become the patentee. It was held that, by analogy, the two-year rule of the statute and as to reissues should be applied to divisional applications (at least to this one), but that since, when the senior applicant filed the divisional application, two years had not expired from the time when the junior applicant, by the publication of his patent, disclosed the invention to the public, the senior's right had not been lost, and he was entitled to his patent upon his divisional application as against the junior, who had become the patentee. It would not be inconsistent with the result reached to date the two-year period from the time when the senior applicant first learned in any way that the junior was claiming the invention as his; but that was not involved. The opinion has been sometimes thought to indicate that the deadly two-year period begins to run from the time of filing the original application; but not only does a careful reading show that this is not said, but it is plain that, if such were the rule, the decision of the case must have gone the other way, for more than two years had expired after the original application was filed before the date of the divisional one.

Even the broad inference that the divisional application must be filed within two years after a public use or publication is criticized in American Co. v. Prosperity Co. (C. C. A. 2) 295 F. 819, and the force of this criticism is apparently conceded in Webster Co. v. Splitdorf Co., 264 U. S. 463, 44 S. Ct. 342, 68 L. Ed. 792. This Webster-Splitdorf Case is much relied upon to support the judgment below; but we think it does not. There the original Kane application was filed in 1910, containing claims which are not stated, but which evidently were relatively narrow. Upon this a patent issued in 1916, also with claims so limited that they were not regarded as vital. Pending this application, in 1914, a patent issued to one Milton, containing claims, doubtless also limited, which Kane thought could be predicated on his disclosure. He therefore, in 1914, filed a divisional application, went into interference with Milton, and succeeded in having these claims awarded to him. They were doubtless among the claims of his patent issued in 1916; but this divisional application and its result do not seem to have been regarded as of any importance. In 1913 a patent issued to Podlesaks, containing claims which also Kane thought he could make, although it would seem that he did not observe this Podlesaks patent until its reissue in 1915. He then filed another divisional application, copying these Podlesaks claims, and went into an interference, in which Kane was defeated. These Podlesaks claims were also apparently not broad enough to be important in the later controversy. Thereupon, in June, 1918, Kane, by way of amendment to the divisional application of 1915, for the first time claimed the invention broadly enough by claims 7 and 8 to cover the Splitdorf construction; and these claims, necessarily broader than those which had been awarded to Podlesaks, were allowed by the Patent Office and included in the patent in suit. The Supreme Court held that, considering all these circumstances, these two claims were invalid.

It is not clear from the opinion what result would have been reached, if based upon only a part of the circumstances. The summation at the end of the opinion says that the two-year limit under discussion applies to divisional applications. No doubt it does; but this is not to say that it applies to them in any other or different way than it would apply to a parent application, where the right to make claims has been lost by laches; the fact that they appear in a so-called divisional application, later filed, does not help them. From the recitals and reasoning of the opinion, we are unable to see that the fact that the amendment of 1918 was presented in a divisional application, instead of an original application, was of any importance to the result reached. The long delay which elapsed between the original and the divisional was important, not because it was the interval between these two applications, but because it extended so long after the 1913 public disclosure. If the original application of 1910 had not matured into a patent in 1916, but had continued pending, and the amendment in 1918 had been offered in that original application, and the facts had been otherwise the same, we see nothing in the opinion, and no reason occurs to us, which would indicate a different result. In other words, claims 7 and 8 were invalid because, in an effort to broaden any previous statements of the invention, they were first presented by an amendment offered five years after their subject-matter had been disclosed to the public by the Podlesaks patent; and such an effort to broaden the claim of invention was, by analogy to the reissue rule, barred by laches, estoppel, and intervening rights. In the present case the divisional application was filed promptly after the intervening device...