American Laundry Machinery Co. v. Prosperity Co., Inc.

• Decision Date: 25 January 1924
• Docket Number: 176.
• Citation: 295 F. 819
• Parties: AMERICAN LAUNDRY MACHINERY CO. et al. v. PROSPERITY CO., Inc.
• Court: U.S. Court of Appeals — Second Circuit

295 F. 819

AMERICAN LAUNDRY MACHINERY CO. et al. v. PROSPERITY CO., Inc.

No. 176.

United States Court of Appeals, Second Circuit.

January 25, 1924

Plaintiffs brought the usual patent bill on No. 1,379,601 and another patent. In respect of the above-numbered patent the bill states in usual form that the patentee, being 'the first,' etc., 'inventor of certain improvements not known or used by others in this country before his invention * * * and not patented or described in any printed publications in this or any foreign country before his invention thereof or more than two years prior to his application, * * * and not in public use or on sale in this country for more than two years prior to (said) date of application, * * * and not patented * * * on an application filed more than twelve months prior to his said application,' did on June 7, 1916, file in the Patent Office an application for letters patent. It is then pleaded that, 'while the said application aforesaid was pending in full force and effect, said invention never having been abandoned it was duly divided, and a divisional application for the said invention' was duly filed by the patentee on October 31, 1919, which divisional application ripened into the patent in suit on May 24, 1921.

This bill was met by a motion to dismiss, because 'it does not appear from any allegations in the bill of complaint that more than two years prior to the date of filing of the alleged divisional application, * * * the alleged inventions of said patent (a) were not in public use or on sale in this country, and (b) were not patented or described in any printed publication in this or any foreign country. ' This motion the District Court granted and dismissed the bill. Plaintiffs appealed. / 1/ Charles Neave, of New York City, B. W. Brockett, of Cleveland, Ohio, and Maxwell Barus, of New York City, for appellants.

Arthur E. Parsons, of Syracuse, N.Y., and Albert F. Nathan, of New York City, for appellee.

Before HOUGH, MANTON, and MAYER, Circuit Judges.

HOUGH Circuit Judge (after stating the facts as above).

The matter at bar is interesting and not unimportant; for, if the order appealed from be well founded, its effect is to render a familiar portion of Patent Office practice extremely dangerous for those acquiescing therein, yet such danger is said to be created by a decision of the Supreme Court. Chapman v. Wintroath, 252 U.S. 126, 40 Sup.Ct. 234, 64 L.Ed. 491.

Under what the cited decision calls 'the statute which is fundamental to all others in our patent law' (R.S. Sec. 4886 (Comp. St. Sec. 9430)), patents are granted to those inventing new and useful arts which (inter alia) were not in public use, and not patented or described for more than two years 'prior to his (the petitioning inventor's) application. ' Under this act it is good pleading for plaintiff in a patent suit to negative the exceptions of the statute in his bill, and this the present plaintiff did, as shown above.

It being 'difficult, perhaps impossible,' to lay down general rules determining when improvements should be embraced in 'one, two, or more' patents, discretion must be left to the Patent Office on this 'nice and perplexing question.' Bennet v. Fowler, 8 Wall. 445, 448 (19 L.Ed. 431). Accordingly the Office has for many years made rules on what are too well known as 'divisional applications' to need explanation; but the statutes may be searched in vain for anything about division.

The sense of the rules is that, if a single application claims 'several inventions' and the 'independence of the inventions' be clear, the division will be insisted on 'before any action on the merits,' but otherwise, at any time during the pendency of the application; that is, division may be, and often is, required years after application filed, and when it is required the applicant must 'elect' to which invention he will limit his pending application, while the other inventions 'may be made the subject of separate applications. ' Rule 42. If the applicant does not agree with the ruling requiring division, he may appeal, and thereby probably delay obtaining any patent; but no applicant can justly be blamed for acquiescing in a command by lawful authority, much less can he properly be made to suffer loss by obedience.

The patent at bar was divided, and the applicant elected to prosecute that part of his invention now represented by the patent in suit, in a 'separate application'-- i.e., a 'divisional' one. The matter is so pleaded, and from the bill the necessary legal inference is that everything material, both in specification and claims of the divisional application, was fully contained in the application originally filed. There is nothing of laches, estoppel, abandonment, or intervening rights suggested in this case. The solicitation of the patent ran smoothly for all we know, except for a difference of opinion between solicitor and examiner, as to how many patents the original disclosure justified.

The defendant has not answered, the facts at present stand as above set forth, but by motion, equivalent to a general demurrer, it is asserted, and has been held by the court below, that plaintiff must here allege (and subsequently prove) that the invention of this divisional application was not patented, described, in public use, nor on sale for more than two years prior to October 31, 1919. In other words, and in this case, the inventor might have made, used in public and sold his invention on the day after he filed his application on June 7, 1916, and then, because he acquiesced in a divisional ruling in 1919, invalidated in limine whatever he requested by the 'separate' application provided for by the...