Kalle & Co. v. Multazo Co.

• Decision Date: 08 April 1940
• Docket Number: No. 7996.,7996.
• Citation: 45 USPQ 378,110 F.2d 814
• Parties: KALLE & CO. et al. v. MULTAZO CO., Inc.
• Court: U.S. Court of Appeals — Sixth Circuit

45 USPQ 378, 110 F.2d 814 (1940)

KALLE & CO. et al. v. MULTAZO CO., Inc.

No. 7996.

Circuit Court of Appeals, Sixth Circuit.

April 8, 1940.

Arthur C. Denison, of Cleveland, Ohio, and Arthur W. Dickey, of Detroit, Mich., (Harness, Dickey & Pierce, of Detroit, Mich., and Werner H. Hutz and Leslie G. Noller, both of New York City, on the brief), for appellants.

Ralph Chappell, of Kalamazoo, Mich. (Ralph L. Chappell and Earl & Chappell, all of Kalamazoo, Mich., on the brief), for appellees.

Before SIMONS, ALLEN, and HAMILTON, Circuit judges.

SIMONS, Circuit Judge.

On appeal from a decree holding patent to Schmidt and Krieger, No. 1,628,279, and patent to Krieger and Zahn, No. 1,803,906, each in the diazo-type copy paper art, invalid, we affirmed, Kalle & Company et al. v. Multazo Co., Inc., 109 F.2d 321. Invalidity of the "16" patent was based on the ground that the claims thereof described a classification of compounds of which some are useful for the successful practice of the invention, and others are not; that the claims therefore include a field to which the inventors have no valid title. Since the claims as written were broad enough to include compounds not having anhydride or quinonoid structure we held them invalid for lack of complete disclosure required by R.S. § 4888, 35 U.S.C.A. § 33.

Promptly upon the announcement of our decision in consideration of the fact that the appellant is a German corporation, a disclaimer was filed in the patent office limiting the claims by excluding from their scope "diazo compounds being formed from amino compounds containing at least one other amino group, which compounds may not be regarded as diazo anhydrides, in a broad sense, and which compounds may not be presumed to have been produced from diazonium compounds with elimination of water."

Having so limited their claims to meet the conclusion announced by us that there was insufficient disclosure, the appellants pray for a rehearing on the "16" patent, and for other reasons pray also a rehearing upon the "18" patent. The successful appellees oppose the granting of the petition with a challenge to the validity of the disclaimer on the ground: (1), that there was no inadvertence, accident or mistake in the framing or acceptance of the original claims as required by 35 U.S.C.A. §§ 65, 71; (2), that there was unreasonable neglect and delay in entering the disclaimer; (3), that the disclaimer is improper in that it makes the patent cover a new combination; (4), that it can have no effect because both plaintiffs did not join in disclaiming.

We have given careful thought to the several briefs in support of and in opposition to the petition. We are of the view that there was no unreasonable neglect and delay in entering the disclaimer and that the contention to that effect is not supported by the case of Ensten v. Simon, Ascher & Co., 282 U.S. 445, 51 S. Ct. 207, 75 L.Ed. 453, nor when that case is considered in relation to the rule of Maytag Co. v. Hurley Machine Co., 307 U.S....