27 F.2d 27 (6th Cir. 1928), 4804, Wagenhorst v. Hydraulic Steel Co.

Docket Nº:4804.
Citation:27 F.2d 27
Case Date:June 20, 1928
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

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27 F.2d 27 (6th Cir. 1928)




No. 4804.

United States Court of Appeals, Sixth Circuit.

June 20, 1928

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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 form 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, had 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

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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...

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