Minnesota Mining & Mfg. Co. v. Coe, 6940.

• Decision Date: 15 August 1938
• Docket Number: No. 6940.,6940.
• Parties: MINNESOTA MINING & MFG. CO. v. COE.
• Court: U.S. Court of Appeals — District of Columbia Circuit

69 App. DC 256, 100 F.2d 429 (1938)

MINNESOTA MINING & MFG. CO. v. COE.

No. 6940.

United States Court of Appeals for the District of Columbia.

Decided August 15, 1938.

Rehearing Denied December 9, 1938.

H. H. Benjamin, of Washington, D. C., and William H. Abbott, of Chicago, Ill., for appellant.

R. F. Whitehead, of Washington, D. C., Solicitor, United States Patent Office, for appellee.

Frank E. Liverance, Jr., of Grand Rapids, Mich., and John Boyle, Jr., of Washington, D. C., amici curiæ.

Before GRONER, STEPHENS and MILLER, Associate Justices.

MILLER, Associate Justice.

On October 28, 1925, Klein and Brown, appellant's predecessors in interest, applied for a patent upon a process for the manufacture of waterproof sheet abrasive material, in the nature of sandpaper. On October 9, 1928, a patent was issued to them containing four claims. Subsequent thereto Klein and Brown surrendered their patent, alleging the specification to be defective and insufficient; and on October 2, 1930, they applied for its reissue. This application, as amended, contained the original claims and several additional ones. The claims, which were the same as those contained in the original patent, were allowed by the Patent Office, and the others were rejected. Appellant, appearing as assignee in interest of Klein and Brown, brought suit under § 4915, R.S., 35 U.S.C.A. § 63; and the lower court, in its decree dismissing appellant's bill, held that the rejected claims in suit were unpatentable. In our view the decision of the lower court was correct.

On this appeal, appellant has withdrawn all claims except three, which are printed in the margin.¹

In support of its position that the claims in suit were lacking in invention, the Board of Appeals of the Patent Office relied upon ten references, consisting of patents granted from 1872 to 1930. The lower court relied particularly upon patents to Okie, 1,565,028, December 8, 1925; 1,581,657, April 20, 1926; 1,635,801, July 12, 1927; and Reissue 17,593, February 11, 1930; the British patent to White, 209,872, January 24, 1924; and patents to Martin, Reissue 17,739 and 17,740, both of July 22, 1930; and made findings of fact, among others, as follows:

5. The patents to Okie, Nos. 1,565,028, 1,581,657, 1,635,801 and Reissue 17,593 disclose flexible abrasive articles, in the nature of sandpaper, and the process for making the same, in which a resinous binder, consisting of a resin or gum with a suitable vehicle such as China wood oil, is applied to a paper backing, abrasive is applied to the binder, with the use of pressure, if desired, and the sheet dried.

6. The British patent to White, No. 209,872, discloses a process for making a waterproof article, in the nature of sandpaper, in which the paper backing is immersed in a bath of cotton seed oil and thinned, if necessary, with benzine, applying thereto a varnish containing resinous material, applying abrasive to the varnish, and drying the article by baking.

7. The patents to Martin, Reissue Nos. 17,739 and 17,740, disclose abrasive disks to be used in machines known as "disk grinders" and the process for making the same, by applying to the backing of cloth or paper a mixture of abrasive grains and a resinous material, which may be shellac, and then subjecting the article to heat and pressure in a mold.

An examination of the references relied upon by the lower court reveals that the findings above quoted were proper. Although the Klein and Brown process may have constituted an improvement, yet all improvement is not invention and entitled to protection as such. To constitute invention improvement must involve something more than what is obvious to persons skilled in the art to which it relates. Pearce v. Mulford, 102 U.S. 112, 118, 26 L.Ed. 93. These principles have been many times stated in the cases, and there is nothing in the facts as they appear in the record to make such principles inapplicable in the present case. See Atlantic Works v. Brady, 107 U.S. 192, 200, 2 S.Ct. 225, 27 L.Ed. 438; Railroad Supply Co. v. Elyria Iron & Steel Co., 244 U.S. 285, 293, 37 S.Ct. 502, 61 L.Ed. 1136.

But appellant contends that the applications upon which patents issued to Okie and Martin — and which are among the references relied upon by the lower court — were co-pending in the Patent Office with the Klein and Brown original application, upon which the reissue application in the present case is based; and that such co-pending references cannot be combined with each other and with other references to anticipate the claimed invention. We assume, without deciding, that this question is properly before us.²

In Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651, a similar question arose in connection with an alleged infringement of a patent issued to one Whitford. The defendant in that case relied upon a patent issued to one Clifford and contended that Whitford was not the first inventor of the thing patented. Clifford's application was filed on January 31, 1911; Whitford's application was filed on March 4, 1911. A patent was issued to Clifford on February 6, 1912; a patent was issued to Whitford on June 4, 1912. Clifford's application gave a complete and adequate description of the thing patented to Whitford, but did not claim it. The court held that Whitford was not the first inventor and hence not entitled to a patent. It declined to accept the reasoning of the Circuit Court of Appeals distinguishing between a patent and an application in effecting a disclosure. 2 Cir., 1 F.2d 227.

Appellant would distinguish the Milburn Co. Case on the theory that its holding depends upon a showing that the invention in controversy is the previous invention of someone other than the claimant; hence, that the case is authority solely for the proposition that a co-pending reference may be relied upon to defeat a claim of first invention, only, when it, alone, gives a "complete and adequate description" of the thing for which the later applicant seeks a patent. But such a conclusion cannot properly be drawn from that case, even though it chanced that the application therein did give a complete and adequate description of the thing patented to the later applicant. The important consideration was that the co-pending application disclosed knowledge upon the part of the earlier applicant inconsistent with the allowance of the later applicant's claim. The Court used the analogies of disclosure by publication in a periodical and of disclosure by issuance of a patent. It stated (page 400, 46 S.Ct. 325) that the invention was made public property as much in the one case as the other, and then continued:

"* * * But if this be true, as we think that it is, it seems to us that a sound distinction cannot be taken between that case and a patent applied for before but not granted until after a second patent...