Rosenwasser Bros. v. B. E. Mfg. Co.

WARD, Circuit Judge.

This is a suit on patent 983,145, issued March 28, 1911, on an application filed December 22, 1910, to Morris Rosenwasser for improvements in leggings. The District Judge dismissed the bill.

[1] The article in question is a very old one in kind, and the prior art is filled with varieties in form. The fact that there was no exact combination like Rosenwasser’s, and that his produces a better legging than any prior one, is not conclusive of patentability. The District Judge found, and we think rightly found, it to lack invention. It is rather a step in advance, made in the ordinary course of improvement by a person skilled in the art. Many of the other forms of leggings were excellent, and are still used with entire satisfaction. Rosenwas-ser’s, though a better, was not a new, result. No crying need existed, which persons skilled in the art were striving to meet, and which were met by the patented combination, so as to altogether or largely displace former combinations. While it is not possible to definite scientifically what improvements are entitled to be called inventions, we agree with the District Judge that Rosenwasser’s combination of old elements is not entitled to be so described.

[2] The District Judge, however, relied also upon a second reason for dismissing the bill. Assuming the combination to be an invention, he held that in Rosenwasser’s earlier application of August 23, 1910, the examiner in the Patent Office ruled out the subject of the patent sued on, and Rosenwasser acquiesced in this action by deleting everything relating to it from the application. This the District Judge regarded as a surrender of the invention, if it be one, to the public. In this we think he erred, and as an important matter of practice is involved it seems well to say so.

Rosenwasser’s original application of August 23, 1910, covered two forms of legging; one having no central hook, for which patent 979,-708 was issued December 27, 1910, on his original application, and also one having a central hook, for which upon a subsequent application of December 22, 1910, the patent now sued on was issued March 28, 1911. Claims 1 and 2 of the original application were broad and generic, and were rejected by the Examiner on the prior art. If they had been allowed, both forms of the invention would have been covered by a single patent. The Examiner'did not reject either specific form of invention, or require the applicant to surrender either, but only to limit his claim to one, and file a separate application for the other. Rosenwasser, not being able to get one patent covering both specific forms, withdrew the form having a central hook, and filed another application for a patent to cover it, five days before the patent for the legging without the central hook issued. Therefore the applications were copending. The course taken was in accordance with rule 42 of the Patent Office which reads:

“42. If several Inventions, claimed in a single application, be of such a nature that a single patent may not be issued to cover them, the inventor will be required to limit the description, drawing and claim of the pending application to whichever invention he may elect. The other inventions may be made the subjects of separate applications, which must conform to the rules applicable to original applications.”

Obviously Rosenwasser did not abandon the invention which he withdrew from the original application, but only his application for it. Hayes-Young Co. v. St. Louis Co., 137 Fed. 80, 70 C. C. A. 1. Walker, on the subject, says:

•‘Sec. 146. * * * AVliere an application covers two inventions, one of which is withdrawn therefrom by division, and made the subject of a divisional application, that new application relates back to the original application from which it was-carved, and is not chargeable with any diminution of significance on account of the transaction.”

For want of invention, however, the decree is affirmed.