Proudfit Loose Leaf Co. v. Kalamazoo Loose Leaf Binder Co.

• Decision Date: 15 December 1915
• Docket Number: 2645.,2601-2604
• Citation: 230 F. 120
• Parties: PROUDFIT LOOSE LEAF CO. et al. v. KALAMAZOO LOOSE LEAF BINDER CO. KALAMAZOO LOOSE LEAF BINDER CO. v. PROUDFIT LOOSE LEAF CO. et al.
• Court: U.S. Court of Appeals — Sixth Circuit

230 F. 120

PROUDFIT LOOSE LEAF CO. et al. v. KALAMAZOO LOOSE LEAF BINDER CO.

KALAMAZOO LOOSE LEAF BINDER CO. v. PROUDFIT LOOSE LEAF CO. et al.

Nos. 2601-2604, 2645.

United States Court of Appeals, Sixth Circuit.

December 15, 1915

On Rehearing, March 7, 1916.

On Rehearing. [Copyrighted Material Omitted]

F. L Chappell and O. A. Earl, both of Kalamazoo, Mich., for complainant.

Cyrus W. Rice, of Grand Rapids, Mich. (H. C. Lord, of Erie, Pa., of counsel), for defendants.

Before WARRINGTON and KNAPPEN, Circuit Judges, and SATER, District judge.

KNAPPEN Circuit Judge.

Nos 2601 to 2604, inclusive, are appeals and cross-appeals, respectively, from the decrees of the District Court in infringement suits upon three separate Bushong patents owned by the Kalamazoo Loose Leaf Binder Company. The writ of error in No. 2645 is brought to review an order of the District Court adjudging the Proudfit Loose Leaf Company and certain individuals guilty of contempt in violating the order and injunction of the court below with respect to one of the patents. The cases were heard together in this court, and will be disposed of in one opinion.

The patents all relate to improvements in loose leaf binders. In the order of application therefor they are: No. 941,757, applied for March 21, 1903, issued November 30, 1909; No. 851,276, applied for August 5, 1904, issued April 23, 1907; No. 878,340, applied for December 31, 1906, issued February 4, 1908. These patents will be spoken of as the 'first,' 'second,' and 'third' patents, respectively, in order of date of application. As is apparent, all three applications were pending in the Patent Office at the same time.

The inventions of the three patents relate, broadly speaking, to the binding devices, including the covers, of loose leaf account books of the type in which the sheets are detachably mounted, through slots in their binding edges, upon binding cords or binding strips extending into the covers of the book, the cords being adjusted by mechanism located within the covers.

The First Patent.

The first patent (No. 941,757) has 16 claims, Nos. 13, 15, and 16, printed in the margin, ^[1] being the only ones involved here. Claims 2 to 12, both inclusive, include as a prominent element an automatically adjustable back, one edge of which telescopes into a pocket in the adjacent cover; the other edge being rigidly connected to the other cover. Neither of the claims in suit involves this adjustable back feature. Claim 14 differs but slightly from the claims in suit, all of which the District Court held valid and infringed. The original application contained no claims upon the features of claims 13 to 16 which distinguish them from all other claims, viz.: The inclusion of the strip-adjusting mechanism within a recess or chamber in the cover of the book, and its arrangement or adaptation for being operated from the outside of the cover (and thus the outside of the book) without opening or uncovering the chamber containing the strip-adjusting mechanism. Claim 13 was formulated, at the suggestion of the Patent Office, during the pendency of still another application of Bushong, interference declared as between Bushong, Proudfit and two other applicants; the claim being, at Bushong's suggestion, for the purpose of getting advantage of earlier filing date of application, included within what we call the first patent. Priority was awarded Bushong, as against Proudfit (the two other parties having dropped out), through the successive actions of the examiner of interferences, the board of examiners in chief, and the Commissioner. Claims 14, 15, and 16 were thereupon added.

It is urged that the distinguishing elements of the claims in suit were not disclosed in the application, and that therefore these claims are invalid under section 4888 of the Revised Statutes, which requires the inventor to 'particularly point out and claim the part, improvement, or combination which he claims he has invented or discovered. ' The authorities most relied upon in support of this claimed invalidity are Hobbs v. Beach, 180 U.S. 383, 21 Sup.Ct. 409, 45 L.Ed. 586, the decisions of this court in Michigan Central R.R. Co. v. Consolidated Co., 67 F. 121, 14 C.C.A. 232, and American Lava Co. v. Steward, 155 F. 731, 736, 84 C.C.A. 157, and the decision of the Supreme Court affirming the American Lava Co. Case, 215 U.S. 161, 30 Sup.Ct. 46, 54 L.Ed. 139.

In our opinion the case is not brought within the statute or the decisions cited, for we think the subject-matter of the claims in suit is disclosed by the original application. Fig. 1 of the drawings (which we herewith reproduce) suggests a recessing of the adjusting mechanism in the cover and its operation by a key from the outside; no means of operating from the inside being shown. The specification, moreover, expressly states that the adjusting angle bar is contained within 'a rectangular cavity' in one of the covers, and describes the angle bar and its adjustment by means of a screw rod in a guide bar inserted in the threaded perforations in the angle bar; it being also said that the 'outer end' (which can only mean the end outside the cover) of the screw rod is 'provided with a head adapted to receive the key l,' which appears in the drawing. It is obvious that if the 'binding cords are contained in longitudinally extending cavities provided in both sections of the cover,' and if the angle bar is in the 'rectangular cavity,' so must be the adjusting mechanism, including the screw rod and the guide bar. The original application was accompanied by the usual inventor's oath. Unless, therefore, the claims are invalid because their substance was not contained within the original application, in the form of claims, as distinguished from disclosure by specifications, the claims are not subject to the objection stated. The authorities cited do not, in our opinion, sustain such proposition. In each of them the amendment held not to be covered by the original oath was made in the specifications themselves. In the instant case no amendment of the specifications in the respect stated was either necessary or in fact made. We cannot think the omission to specifically include the features in question within the statement of the 'characteristic features' of the invention is fatal to the validity of an otherwise complete disclosure, especially in view of the broad statement of the nature of the invention as relating 'to the binding device, and also to the covers of loose leaf account books,' and that 'it has for its object to eliminate certain inconvenient and objectionable features common to books of this kind'-- the disclosure of the adjusting mechanism before referred to occurring in the statement of 'the devices employed for * * * accomplishing said objects.'

(Image Omitted) The defenses requiring most consideration are anticipation and lack of invention in view of the prior art. The art of temporarily binding loose leaves or sheets was not new when Bushong entered the field, and (with one exception) each individual element of the combination of each of the three claims in suit is, broadly speaking, found in the prior art, by at least more or less substantial equivalents. But we find no reference in the prior art showing a complete anticipation either of the entire combination of either of the three claims in suit, or even of what we have spoken of as their distinguishing elements, viz. the inclusion of the strip-adjusting mechanism within a recess or chamber in the cover of the book arranged or adapted for being operated from the outside of the cover, without opening or uncovering the chamber containing such mechanism.

The reference regarded by defendant's expert as most clearly resembling the invention of the claims in suit is that of England-- No. 194,230 (1877)-- who discloses a spring within a recess of one cover of a file or binder for letters, periodicals, etc. The binding cords are attached to the free end of the spring, passing through eyelets in the binding edge of the cover and through an index secured to the opposite cover. A strap extends from the free end of the spring to the front edge of the cover. Claim 13 of the first Bushong patent reads literally upon England, although this is not true of claims 15 and 16. However, England does not in form or substance disclose the essence of Bushong's device. For example, England's strap has nothing to do with adjusting the tension of the binding strips relatively to the leaves, except that manually pulling upon it relaxes the tension of the spring; the strap serving also to bring together and fasten the two covers of the file when closed. It is in no proper sense the key of Bushong. The adjusting mechanism is not designed to preserve a uniform tension of the binding strips, nor does it effect such result. On the contrary, the mechanism in such that, necessarily, the greater the thickness of the contents of the file the greater the tension of the spring, and vice versa. Moreover, it is not clear that England's cords were 'secured' to 'loose leaves,' except as the contents of the file are held between the members of a so-called 'index'; that is to say, it is not clear that the cords pass through the filed papers. It plainly lacked utility as respects loose leaf ledger work, as it had little, if any, adaptability to use in connection with strips or cords carrying the detachable leaves of an otherwise substantially and permanently bound book.

Rosenthal No. 583,335 (1897), disclosed in an expansible binding, 'adapted to be used in connection with account books or with periodicals, or any other such books which require to be bound together,' a series of removable leaves, their rear edges having rectangular notches ...