Rosenberg v. Carr Fastener Co.

• Decision Date: 21 July 1931
• Docket Number: No. 412.,412.
• Citation: 51 F.2d 1014
• Parties: ROSENBERG et al. v. CARR FASTENER CO.
• Court: U.S. Court of Appeals — Second Circuit

51 F.2d 1014 (1931)

ROSENBERG et al. v. CARR FASTENER CO.

No. 412.

Circuit Court of Appeals, Second Circuit.

July 21, 1931.

Clarence M. Crews, of New York City, Edgar M. Kitchin, of Washington, D. C., and David L. Podell, Edmund Quincy Moses, and Jacob J. Podell, all of New York City, of counsel), for appellants.

Emery, Booth, Varney & Whittemore, of New York City (Preston Upham and L. G. Miller, both of Boston, Mass., of counsel), for appellee.

Before L. HAND, AUGUSTUS N. HAND, and CHASE, Circuit Judges.

AUGUSTUS N. HAND, Circuit Judge.

This is the usual patent suit for infringement of letters patent Nos. 1,299,232, 1,411,184, and 1,465,148, granted by the United States to Heyman Rosenberg. The suit is by the patentee and Parker-Kalon Corporation, an exclusive licensee. Infringement was admitted by the defendant. The trial court dismissed the bill as to all three patents for invalidity.

The patents relate to improvements in the art of fastening together sheets of metal with screws.

Patent No. 1,299,232, granted upon an application filed April 16, 1917, is for the process.

Patent No. 1,411,184, granted upon an application filed April 16, 1917, is for the metallic structure.

Patent No. 1,465,148, granted upon an application filed January 18, 1917, is for the screw designed for insertion in the sheets of metal or other material.

Rosenberg, the inventor, testified that, in order to get away from the expensive mode of joining strips of metal by inserting bolts through drilled holes and heading the bolts with nuts, he tried the method of punching a hole in the strips and then screwing down ordinary screws to hold them together. This, he said, he did in 1905 or 1906. He found that it did not work and the fastenings got loose because the upper parts of the screws just under the heads were not threaded. Thereafter he used screws threaded all the way to their heads, but still found that they worked loose in time. Finally, in 1913, he adopted the plan of hardening the teeth on the screws so that they would not wear down when being inserted in the metal or break down under subsequent vibrations or other strains. In the early years of his experimentation he says that he used tapering screws. These did not work out well, for it took too much power to screw them in, and beside they would "throw the burr away," and, under vibration, would come loose. He supplanted them in 1913 by screws of the type of the ordinary wood screw which Professor Rautenstrach, of Columbia, defined as "a screw with a cylindrical body and a tapering point." The result was that a screw such as Rosenberg used, for which a proper hole had been punched, would stand up for a long time against heavy strains, and the screws and strips of metal in which they were inserted had a great commercial success. Rosenberg also laid great stress in his testimony on the kind of punch which he used and the cylindrical hole which was bored in the sheets of metal for the insertion of the screw. He at first used a tapered punch and left it to the individual workman to determine how far to insert it and thus how large a hole to make in each case. This resulted in lack of adaptation of the hole to the screw. He accordingly standardized his tools so as to have punches of the size required for the particular screws to be used, with a stop shoulder to limit the extent of the insertion and of equal diameter for the whole length of each punch except at the point. These stop punches have been used from 1917 on, but customers are still told that they can use a tapering punch if they prefer.

The gist of Rosenberg's invention in all his patents was a cylindrical screw having a hardened thread and threaded the entire length.

On November 11, 1913, Rosenberg had filed an application in the Patent Office for an improved screw for screwing sheet metal structures together. He said that "to secure two or more sections of pipe or ducts or any other elements" he first punched a hole with the end of the screw slightly smaller than the body of the screw to be used. He then inserted the screw and turned it, the screw cutting its own thread or acting as a tap as it turned and passed through the punch opening; that the screw should be "made of steel and properly tempered" so that it would readily cut a thread in the pipes or ducts which are usually made of relatively soft material, such as iron. He added that, in order that the screw should "not back off," he made the shank straight and tapered the point; the thread extending through the length of the shank and around the tapered end which acted to start the thread in the punched opening. In order further to prevent the screw from backing off, he stated that he "preferably" formed teeth or serrations on the under surface of the head which would eat into the middle of the element to which the screw was applied and lock the screw and thus prevent it from turning after it had been forced home. The original application contained five claims. The first claim was for "a screw, consisting of a straight shank, having a tapered end, a head, and a thread extending through the entire length of the shank and tapered end." All of the other claims, though varying slightly from one another, provided as an additional element for "projections on the under surface of the head."

The claims were rejected by the Commissioner on the prior art in a letter under date of March 12, 1914, to Morris Block, the then attorney for Rosenberg who had filed the usual power of attorney from the latter in accordance with the regulations.

Nothing further was done upon this application until April 6, 1917, when Edgar M. Kitchin, Rosenberg's new attorney, filed a petition in the Patent Office requesting that the old application be revived, that the claims be canceled, and two new claims be inserted. This petition was accompanied by an affidavit of Rosenberg in which he stated that the five original claims did not cover the substance of his invention and that he did not learn that it had become abandoned for lack of prosecution until on or about March 28, 1917, when his former attorney, Morris Block, so informed him. The new proposed claims did not mention such an element as "projections on the under surface of the head" which had been found impracticable and were substantially like rejected claim 1 except that they provided for a "hardened" thread instead of leaving this to be read into the claims from the words in the specification "made of steel and properly tempered." The Commissioner, in a letter dated April 27, 1917, denied the petition to revive "without prejudice," whereupon two years later, on May 24, 1919, a further petition to revive was filed. That petition attempted to excuse delay in the prosecution of the former application because of the misunderstanding of the application by the former attorney, applicant's own ignorance that certain features of his invention had been disclosed in 1913 in a printed publication, and his belief that he had adequate protection by reason of certain other applications then pending before the Patent Office, on one of which patent No. 1,299,232 had been granted. This petition to revive was denied by the Department after a rehearing on the ground that the showing did not establish that the delay between April 27, 1917, and the new petition of May 29, 1919, was unavoidable.

Under Rev. St. § 4886 (35 USCA § 31) a patent is absolutely barred if the subject-matter of the invention was described in a printed publication or was used or sold in this country more than two years before the application was filed. The applications for the patents in suit were filed in 1917, and the Parker Supply Company, of which Rosenberg was an officer, was advertising the screws in 1913 and 1914, which he sought to patent in his abandoned application of November 11, 1913. Goldberg testified that he had personally prepared the advertisements in trade papers for the Parker Supply Company, and that the company had sold several thousand in 1913. This was all more than two years before the applications for the patents in suit were filed. Therefore these patents are barred so far as they related to articles described, used, and sold in 1913 and 1914, unless Rosenberg's original application of November 11, 1913, was not in law abandoned.

The complainants seek to avoid the prior publication, use, and sale by treating Rosenberg's old application as still alive. But Rev. St. § 4894, as amended, provides that "all applications for patents shall be completed and prepared for examination within one year after the filing of the application, and in default thereof, or upon failure of the applicant to prosecute the same within one year after any action therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner of Patents that such delay was unavoidable. * * *" Title 35, U. S. Code, § 37 (35 USCA § 37).

If the notice of the rejection of the claims of the original application was properly given (a matter which we shall discuss later), we feel no doubt that the Commissioner acted within his rights in declining to revive the application. The attorney Block, who evidently lost faith in the invention, regarded the application as hopeless, and did nothing for three years after the last action therein. The next attorney likewise failed to renew his petition to revive for two years after the first was denied "without prejudice." If this was not an abandonment, it would be hard to know what would be one. Certainly we cannot say that when the Commissioner was not satisfied that the "delay was unavoidable" he exercised his jurisdiction in a capricious or arbitrary manner. Hayes-Young Tie Plate Co. v. St. Louis Transit Co. (C. C. A.) 137 F. 80, 82; Martin v. Robertson, 59 App. D. C. 270, 39 F.(2d) 520.

In Hayes-Young Tie Plate Co. v. St. Louis...