In re Disch, Patent Appeal No. 4381.

Decision Date24 June 1940
Docket NumberPatent Appeal No. 4381.
Citation112 F.2d 794
PartiesIn re DISCH.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Merwin F. Ashley, of Boston, Mass. (Victor Cobb, of Boston, Mass., and Arthur M. Hahn, of Washington, D. C., of counsel), for appellant.

Howard S. Miller, of Washington, D. C., for the Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming in part a decision of the examiner rejecting claims 1 to 13, inclusive, of appellant's application for a reissue of patent No. 2,050,831, issued to him on August 11, 1936. No claims were allowed. The examiner rejected the claims upon two grounds: 1, that the claims are based upon new matter inserted in the reissue application, and 2, that the claims are not patentable over the cited prior art.

The Board of Appeals affirmed the rejection by the examiner upon the first ground above stated, but refused to affirm his decision upon the second ground. Therefore the only question before us is whether appellant had inserted new matter in his reissue application upon which the claims are based.

Claim 1 is illustrative of the claims before us and reads as follows: "1. A counter unit for shoes comprising a stiff body portion molded to the required shape, an outer cover having overlapping edges bent inwardly over the edges of the body portion and fastened to the inner surface thereof, an inner lining cemented to the inner surface of the body portion having its marginal portions overlapping the bent-over edges of the outer cover, and stitches passing through the marginal edges of the outer cover, body portion and inner lining."

The subject matter of appellant's application is described by the examiner in his statement as follows: "This is an application for a reissue of Patent No. 2,050,831, which relates to the construction of that portion of the upper of a shoe which surrounds the heel of the wearer. In conventional shoemaking an outer upper material with an inner lining layer are stitched together at their top edges. At the rear or quarter portion thereof a stiffening element, which may or may not be molded to shape, is inserted between the outer layer of the upper material and the inner lining material. These three layers are molded together over a last, and the bottom marginal portions are bent over and attached to the heel portion of an insole which has been previously placed on the last. An outsole is then attached over the inturned marginal portions of the upper materials. This results in a shoe having a conventionally stiff quarter portion."

The examiner described the invention as disclosed in the patent sought to be reissued as follows:

"In the following discussion the word `quarter' will be used to designate the complete heel portion of the upper of a shoe including both layers of the exposed upper materials and the stiffening element therefor. The stiffening element will be referred to as a `counter stiffener'. The principal point in controversy here is whether the original application for the issued patent was drawn to a complete premolded quarter portion of a shoe or merely to a counter stiffener therefor. Applicant contends that the original application clearly discloses a quarter, whereas the Examiner is of the opinion that a quarter is not disclosed with sufficient clarity, if it is disclosed at all, to support the matter inserted in the present application for a reissue.

"To describe the invention in accordance with the terms used in the original disclosure, the invention relates to `counters or heel-stiffeners' or to a `counter unit'. The described unit consists of three layers of material having a shape corresponding to that of the rear end of the upper portion of a shoe. The unit is made by first molding a `counter' made of `stiff leather or other suitable material' to the shape of the heel end of the upper. This includes an inturned flange at the bottom marginal portion of the counter. To the outer surface of this stiff molded counter an `outer cover' of `soft leather or fabric' is cemented. The outer cover is somewhat larger than the counter so that its marginal portions may be turned over the edges of the counter and cemented to the inner marginal portions of the counter. An `inner lining' of `soft leather' is then stretched over a form, and the inner surface of the counter is cemented to it. Any surplus lining extending beyond the edges of the counter are then trimmed off and a line of stitching is passed through the marginal portions of the outer cover, counter, and inner lining to firmly unite them. Exactly how this three-layer unit is incorporated in a shoe is not clear from the original disclosure as will be more particularly pointed out below."

Those portions of appellant's application which the Patent Office tribunals held were new matter read as follows:

"The term `counter unit' wherever employed in this specification and in the appended claims refers to the complete back part of the upper of a shoe, sometimes referred to as a quarter, and includes the quarter portions of the upper, the lining and a molded counter stiffener secured between the upper and lining.

"* * * As also shown and described, the cover 15 and lining 17 are, respectively, of a nature appropriate to constitute the outer finished surface and the exposed inner or lining surface of the quarter of a finished shoe, and the free downwardly extending edges are folded, stitched and trimmed to constitute acceptable exposed free edges in a completed open shank shoe or slipper."

The examiner required that these paragraphs be cancelled as containing new matter; appellant declined to cancel the paragraphs.

We quote from the disclosure in appellant's patent as follows:

"My invention relates to footwear and more particularly to women's shoes and slippers, and especially to the counters or heel-stiffeners in such footwear which with ordinary usage have a tendency to collapse or to become so distorted as to impair their appearance as well as their serviceability in use.

"Ordinarily a cemented shoe or slipper is made with a space or pocket in the back of the shoe between the inner lining and outer cover portion of the shoe for the insertion of the counter, with the result that there has always been a large amount of undesired play in the back or heel portion of the shoe, because the counter did not reach the edges or contours of the enveloping pocket formed by the outer cover and inner lining. Frequently an unsightly distortion was occasioned because the edges of the lining and cover were turned over the counter in one direction or the other.

"To overcome these defects and disadvantages incidental to shoes and slippers of this type, I have now provided an improved counter unit that is separately assembled apart from the shoe, and the objects of my invention are, among other things, are to form a new type of cemented and stitched counter unit which will retain its shape under all conditions of use and wear, and at the same time give a smooth surface both inside and outside of the counter and in the shoe itself.

"The uniform edges of the lining and cover portion are secured by stitching throughout, which also maintains the exact outline of the counter with the result that the rigidly cemented and stitched parts after assembly form a counter or heel-stiffener that will give long wear and so preserve a neat appearance in the shoe.

"A further object of my invention is to provide an exceptionally simple but highly effective counter unit to be embodied in shoes and slippers of this type which may be economically manufactured and which will retain its natural shape and contour in use.

* * *

"The counter * * *, preferably made of stiff leather or other suitable material, comprises the body portion * * * molded to embrace the heel of the foot with the bottom portion bent inwardly to form the inturned flange * * * which overlies the margin of the heel seat as shown in Fig. 1, such flange * * * having the cut-out portion * * * that leaves a space for the insole * * * to be cemented or otherwise secured to the heel-seat.

"The outer cover * * * is preferably formed and cut from soft leather or fabric in somewhat triangular form of slightly larger size and shape than the body portion * * * of the counter * * * so that its marginal edges * * * when cemented to the outer surface of the counter will overlap the edges of the counter * * * and the under part of the marginal flange * * * as shown in Fig. 3.

"The inner lining * * * is also preferably formed and cut from soft leather in triangular from as shown in Fig. 2, with the V-shaped notch * * * cut therein so that when the inner lining * * * is molded and cemented to the inner surface of the counter * * *, the edges of the notch * * * will be brought together to form a smooth bottom surface around the top surface of the marginal flange * * * as shown in Fig. 4.

"The method of assembling and uniting the parts shown in Fig. 2 is substantially as follows: The counter * * * having been suitably shaped and the outer cover * * * and inner lining * * * having been cut substantially in forms shown in Fig. 2, I next...

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2 cases
  • Application of Hay, Patent Appeal No. 76-558
    • United States
    • U.S. Court of Customs and Patent Appeals (CCPA)
    • 20 Mayo 1976
    ...or drawing," but the room for correction here is not very great since new matter cannot be introduced. See In re Disch, 112 F.2d 794, 798, 27 CCPA 1321, 1326, 46 USPQ 62, 66 (1940). The new matter provision of § 251 is thus a limit on the correction of errors, even where those errors were m......
  • In re Gagnier, Patent Appeal No. 4321.
    • United States
    • U.S. Court of Customs and Patent Appeals (CCPA)
    • 24 Junio 1940

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