--

PATENTABILITY-Continued. 79. ARTICLE HANDLING APPARATUS.- Certain claims to article handling apparatus Held unpatentable over the prior art. *In re Lippold, 526. 80. INVENTION-COMMERCIAL SUCCESS.-"An improvement which results in no more than is to be expected from one skilled in the art does not constitute invention and where lack of novelty and invention are clearly shown, no legal significance can be attached to the fact that utility and commercial success were accomplished by the efforts of an applicant for a patent." *In re Irmscher, 543.

81. APPARATUS AND METHOD FOR HANDLING ARTICLES.-Certain claims to apparatus and method for handling articles Held unpatentable over the prior art. *Id.

82. COMMERCIAL SUCCESS. "Although commercial success may be persuasive in doubtful cases, it is well settled that where it is evident that claims do not define patentable subject matter commercial success is immaterial." *In re Normann et al., 532.

83. REJECTION BASED ON INTERFERENCE.-The appealed claims Held properly rejected as unpatentable over the counts of an interference which appellants lost. *Id.

84, COIN HOLDER.-Certain claims to a coin holder Held unpatentable over the prior art. *In re Smith, 540.

PERJURY. See Interference, 65.

PETITION_FOR REHEARING. See Appeal to the United States Court of Customs and Patent Appeals, 10, 11, 12, 13.

PRACTICE IN THE U. S. PATENT OFFICE. See Applications, 2, 5, 9. PATENTS-SUBCOMBINATION.-"The statutes permit, and it is the settled practice of the Patent Office, many times sustained by this Court, to allow claims to a combination and also its subcombinations.' Special Equipment Company v. Coe, Com. of Patents, 561. PRECEDENTS. See Trade-Marks, 78.

PRESUMPTION. See Interference, 24.

PRIORITY OF INVENTION. See Interference; Violation of Antitrust Laws, 5. PRIOR PATENTS. See Appeal to the U. S. Court of Customs and Patent Appeals, 16; Particular Patents, 3; Patentability, 34, 43.

PROCESS. See Appeal to the U. S. Court of Customs and Patent Appeals, 16; Interference, 39; Invention, 13; Patentability, 4, 13, 14, 18, 29, 55, 61, 62, 73, 75; Scope of Patent, 1; Sufficiency of Disclosure, 1; Violation of Antitrust Laws, 5, 7, 12.

PRODUCT.

See Interference, 39; Patentability, 4, 18, 63; Scope of Patent, 1. PROOF. See Interference, 46, 52; Patentability, 17, 22; Trade-Marks, 63, 64, 65, 66, 67, 68.

PROPER NAMES. See Trade-Marks, 6.

PROSECUTION OF APPLICATION. See Interference, 3; Reissue Applications, 1. PUBLICATIONS. See Claims, 6; Trade-Marks, 26, 27, 28, 60.

REASONS OF APPEALS. See Appeal to the U. S. Court of Customs and Patent Appeals, 5, 10, 17; Patentability, 44.

APPEAL JURISDICTION. "The function of this court is to 'revise the decision appealed from in a summary way, * * * and the revision shall be confined to the points set forth in the reasons of appeal.' Sec. 4914 R. S., U. S. C., title 35, sec. 62. If the reasons of appeal are of such a character that it is impossible to revise the decision appealed from we may and should disregard such reasons and dismiss the appeal." *Cohen et al. v. Sparrow, Cohen et al. v. Gille, 93.

RECORD OF THE CASE. See Appeal to the U. S. Court of Customs and Patent Appeals, 1, 2, 6, 8, 16; Certiorari; Decisions of the Board of Appeals of the U. S. Patent Office; Interference, 5, 11, 13, 14, 15, 20, 21, 22, 23, 40, 42, 44, 54, 55, 62; Invention, 4, 12, 13, 14; Patentability, 63, 74; Right to Make Claims, 1; Suits under Section 4915, 1, 4; Trade-Marks, 13; Violation of Antitrust Laws, 10.

REDUCTION TO PRACTICE. See Interference, 1, 6, 12, 18, 19, 33, 34, 38 to 58 inclusive.

654637-46- 45

REFERENCES. See Appeal to the U. S. Court of Customs and Patent Appeals, 3, 6, 7; Applications, 1; Applications and Patents; Claims, 5; Invention, 2, 10, 13, 14, 15, 16; Patentaility, 5, 20, 21, 22, 42, 52, 55, 68, 72, 73, 74; Trade-Marks, 26.

REGISTRATION OF TRADE-MARKS. See Trade-Marks.

REISSUE APPLICATIONS. See Interference, 7, 25, 26, 29, 59, 62. 1. ESTOPPEL-CANCELLATION OF CLAIMS IN PROSECUTION OF ORIGINAL APPLICATION. Certain claims in the reissue application of appellant, Held properly rejected on the groud of estoppel in view of appellant's deliberate cancelation of claims of the same scope during the prosecution of his original application. *In re Lane, 101.

2. SAME INVENTION.-Where appellant secured a patent on a method of packaging articles, and all the claims of that patent were expressly limited to the use of stabilized rubber hydrohalide, and there was no teaching or suggestion int he specification that any other than a stabilized rubber hydrohalide might be used; and an application for reissue was filed in which the claims recited the use of rubber hydrohalide without reference to stabilization, Held that these reissue claims "could not have been granted upon the basis of the original specification" and that "it would be wholly incompatible with the patent laws to grant claims in a reissue application which could not have been granted in the original patent.' *In re McCoy, 204.

3. SAME.

Since the use of an unstabilized rubber hydrohalide was not discovered by appellant, but by some other person, Held that "appellant could not have intended that his patent should cover the use of an unstabilized film, and, therefore, a reissue with claims broadened to include the use of such material may not be allowed." *Id.

4. PATENTABILITY-DRIVE-IN THEATER.-Appellant Held not entitled to a patent upon the claims to a drive-in theater sought in his reissue application. a Josserand v. Coe, Commissioner of Patents, 22.

5. BROADENED CLAIMS.-Where claim 5 of appellants' reissue application and claim 2 of their patent were identical, except that the latter claim contained the symbol H-CO-O, whereas the former claim contained the symbol RO with the statement that R might be H.CO or H, Held that claim 5 of the reissue application was broader than claim 2 of the patent. *In re Ruzicka et al., 449.

6. SAME ESTOPPEL.-"In appellants' original application claim 18 was drawn to a compound exactly corresponding to that of claim 2 with H substituted for H.CO. This claim was canceled before the patent was issued. The allowance of claim 5 would, as is urged by the Solicitor, in effect be a reinstatement of the canceled claim or, as the Board expressed it, would allow the appellants to recoup what they gave up by canceling claim 18." *Id.

7. ESTOPPEL.-"Having thus deliberately withdrawn all claims to the measuring apparatus per se, in response to the Examiner's requirement for division, appellants cannot now successfully contend that their failure to include claims in their patent to the measuring apparatus per se was due to inadvertence, accident, or mistake. We held, therefore, that appellants are not entitled to obtain, by reissue, claims, regardless of scope, which are limited to the liquid measuring apparatus per se, and which they conceded by their acquiescence in the requirement for division they were not entitled to claim in their patent." *In re Cornell et al., 535.

8. GLOVE. In appellant's reissue application, certain claims to a fourchette for a glove Held unpatentable over the prior art. *In re Banovic, 552. REJECTION OF CLAIMS. See Appeal to the U. S. Court of Customs and Patent Appeals, 5, 6, 17; Claims, 4; Double Patenting, 3; Patentability, 4, 20, 23, 33, 38, 40, 41, 44, 48, 52, 55, 73, 74, 75, 77, 83; Reissue Applications, 1 ̧ See Appeal to the U. S. Court of Customs and Patent Appeals, 8; Suits under Section 4915, R. S. 1; Violation of the Antitrust Laws, 15. RENEWAL APPLICATIONS. See Invention, 3.

REMAND.

RES ADJUDICATA. See Interference, 7, 60, 61; Trade-Marks, 68, 69.

RESULTS. See Interference, 58; Invention, 15; Patentability, 16, 35, 59, 72, 74, 78.

RIGHT TO MAKE CLAIMS. 64; Patentability, 54. 1. CLAIMS PERMISSIBLE BREADTH.-Where appellants' specification disclosed a single compound, the reaction product of polymerized cashewnutshell oil with formaldehyde, as an insulating filling in a radioshielding harness, and the record did not show that any other compound could successfully be used as a substitute therefor, Held that appellants were not entitled to claims to the harness in which the insulating compound was broadly expressed as a "solid yieldable dielectric material," "a yieldable, non-moldable unitary solid having dielectric properties," and "a yieldable dielectric mass having a uniform molecular structure and being in a dry, solid state." *In re Spengler et al., 139. 2. APPLICATION-NEW MATTER.-In regard to an amendment made by appellants to their application in an effort to provide a disclosure of "plungers" to enable them to support that feature of a patent claim copied by them for interference purposes, Held that the amendment injected new matter into the application and that the requirement that it "should be cancelled" was correct. *In re Trier et al., 231. 3. SAME DISCLOSURE CLAIMS COPIED FRom Patent.-Held that Wemple et al. v. Peirce et al., 22 C. C. P. A. (Patents) 1064, 75 F. (2d) 998, 25 USPQ 37, 458 O.G. 442, "should not be regarded as holding that in every case where a broad range given in an application overlaps that of a claim at some point it will always form a sufficient basis for the right of making the claim." *In re Draegar et al., 501. RIGHT TO REGISTER TRADE-MARKS. Trade-Marks, 15, 37, 45. RIGHTS OF PATENTEE. See Scope of Patent, 2, 3; Validity of Patent 2, 3. 1. PATENTS OWNERSHIP-OPTIONS ENJOYED BY OWNER.-The owner of a patent Held to have always enjoyed the options of setting a price for its use by others, electing to use it himself and refusing to license it, or retaining it and neither using nor licensing it. Hartford-Empire Co., et al. v. The United States of America; Corning Glass Wks. et al v. The United States of America; Owens-Ill. Glass Co. et al. v. The United States of America; Hazel-Atlas Glass Co. et al. v. The United States of America; Thatcher Mfg. Co. et al. v. The United States of America; Lynch Corp. et al. v. The United States of America; Ball Bros. Co. et al. v. The United States of America; Glass Container Assn. et al. v. The United States of America; Collins, Isaac J. v. The United States of America; Fulton, T. C., et al. v. The United States of America, 607. 2. SAME WORKING OF INVENTION.-"A patent owner is not in the position of a quasi-trustee for the public or under any obligation to see that the public acquires the free right to use the invention. He has no obligation either to use it or to grant its use to others. If he discloses the invention in his application so that it will come into the public domain at the end of the 17 year period of exclusive right he has fulfilled the only obligation imposed by the statute.' Id. ROYALTIES. See Jurisdiction of the Court, 2, 3; Validity of Royalty Adjustment Act, 1, 2, 3, 4, 5; Violation of Antitrust Laws, 4, 5, 7, 12, 14. RULES OF PRACTICE IN THE U. S. PATENT OFFICE. See Appeal to the U. S. Court of Customs and Patent Appeals, 9, 10, 11, 12, 13, 14; Applications, 9; Applications and Patents; Interference, 9, 59; Jurisdiction of the Court, 4.

See Interference, 6, 22, 23, 25, 26, 27, 40, 62, 63,

8

SCOPE OF CLAIMS. See Interference, 61; Reissue Applications, 1, 7.
SCOPE OF PATENT. See Patentability, 35; Reissue Applications, 3.

1. PROCESS FOR PRESERVING BIOLOGICAL PRODUCTS. PERMISSIBLE SCOPE
OF PROTECTION.-"Even if we were of a different opinion as to the
patentability of the process disclosed by these claims we could scarcely
grant them under the doctrine of Monsanto Chemical Co. v. Coe
* * *. The claims in issue attempt to extend the control of appel-
lant over a process beyond that which has been allowed by the Patent
Office. There is no explanation as to the practical effect which these
claims will have in extending appellant's control over the art, and
no showing that the scope already granted by the Patent Office is not
an adequate reward for the discovery." a F. J. Stokes Machine Com-
pany v. Coe, Commissioner of Patents, 6.

SCOPE OF PATENT-Continued.

2. PATENTS SUBCOMBINATION.-"A patent on the combination embodied in the complete machine, without the allowance of the subcombination claims, would not, as the court below thought, prevent the free use of the subcombination. The Corn-Planter Patent, 23 Wall. 181, 224 6 O. G. 392; Schumacher v. Cornell, 96 U. S. 549, 554; Rowell v. Lindsay, 113. U. S. 97, 101, 31 O. G. 120; Mercoid Corp. v. Mid-Continent Co., 320 U. S. 661, 668, 561 O. G. 345. Hence denial of a patent on the subcombination would deprive the inventor of the benefit of the exclusive right to use the subcombination in the ways specified by the patent laws. It would also leave the public free to use, and thus to appropriate a part, however important, of the inventor's complete machine, even though patented." Special Equipment Company v.

Coe, Com. of Patents, 561.

3. SAME NATURE OF PATENT GRANT.-"The patent grant is not of a right to the patentee to use the invention, for that he already possesses. It is a grant of the right to exclude others from using it. As the statute, R. S. § 4884 provides, the grant is of the 'exclusive right to make, use and vend' the invention, and this includes the exclusive right to license others to make, use and vend it. By the very terms of the statute the grant is nothing more than a means of preventing others, except under license from the patentee, from appropriating his invention." •Id.

4. SAME

*

PATENT RIGHTS-PUBLIC INTEREST.-"Automotive has sought to enfore several patents and related contracts. Clearly these are matters concerning far more than the interests of the adverse parties. The possession and assertion of patent rights are 'issues of great moment to the public.' * * A patent by its very nature is affected with a public interest. As recognized by the Constitution, it is a special privilege designed to serve the public purpose of promoting the 'Progress of Science and useful Arts.' At the same time, a patent is an exception to the general rule against monopolies and to the right to access to a free and open market.' Precision Instrument Manufacturing Company, Larson, and Snap-On Tools Corporation v. Automotive Maintainance Machinery Company, 582.

5. EQUITY-CLEAN HANDS-PUBLIC INTEREST.-"The far-reaching social and economic consequences of a patent, therefore, give the public a paramount interest in seeing that patent monopolies spring from backgrounds free from fraud or other inequitable conduct and that such monopolies are kept within their legitimate scope. The facts of this case must accordingly be measured by both public and private standard⚫ of equity. And when such measurements are made, it becomes clear that the district court's action in dismissing the complaints and counterclaims 'for want of equity' was more than justified.” ・ Id. SCOPE OF TRADE-MARKS. See Trade-Marks, 70, 71. SHERMAN ACT. See Violation of Antitrust Laws, 1, 2, 6, 13. SIMILARITY OF TRADE-MARKS. See Trade-Marks, 2 to 16, 18, 72, 73, 74, 75, 76, 77, 78.

SPECIFICATIONS. See Applications and Patents; Claims, 6; Interference, 64;
Limitation of Claims, 1, 2; Reissue Applications, 2; Right to Make
Claims, 1; Sufficiency of Disclosure, 3; Suits under Section 4915, R. S., 2.
STATE OF THE ART. See Appeal to the U. S. Court of Customs and Patent
Appeals, 4, 7; Invention 6, 7, 17; Patentability; Reissue Applications, 8;
Scope of Patent, 1.

SUBCOMBINATION. See Invention, 3, 4, 5; Practice in the U. S. Patent Office;
Scope of Patent, 2; Validity of Patent, 2.
SUBSTITUTION. See Interference, 10; Invention, 14, 16; Patentability, 16;
Right to Make Claims, 1.

SUFFICIENCY OF DISCLOSURE. See Right to Make Claims, 3.

1. APPLICATION-DISCLOSURE CLAIMS COPIED FROM PATENT.-Patent claims defining a process of alkylation in which olefinic and isoparaffinic hydrocarbons are reacted while flowing in a circuit, and calling for increasing the rate of flow of the materials in the circuit such that they traverse said circuit in less than 70 seconds, as in some claims, or in less than 45 seconds, as in others, Held not satisfied by the disclosure in appellants' application of a rate of flow resulting in a traverse time of between 36.9 seconds and 147 seconds. *In re Draeger et al., 501.

SUFFICIENCY OF DISCLOSURE-Continued.

2. SAME-SAME-SAME.-"We find, agreeably to the holding of the tribunals below, that there is no definite teaching in appellants' application as filed of the desirability of keeping the traverse time below the limits stated in the claims. Obviously the limits of 70 seconds and of 45 seconds must be regarded as material and critical. The mere fact that by manipulation of appellants' alkylation system it may be possible to limit the rate of flow in accordance with the limitations of the claims is not sufficient. Inherency does not mean that a thing might be done, or that it might happen, as in the instant case, one out of twenty odd times; but it must be disclosed, if inherency is claimed, that the thing will necessarily happen." *Id.

3. SAME

SAME-SAME.-"The mere fact that appellants' broad range overlaps at one end does not make it a disclosure of the critical limitations in the appealed claims. Appellants' application as filed fails to teach the gist of the invention here involved, and they should not now be permitted, on said disclosure, to extract from an issued patent, claims obviously based upon the disclosure of a critical element not even hinted at in their specification. To hold otherwise would encourage rather than discourage indefinite, broad disclosures and thus prevent inventions relating to critical matters, as does the one involve here, from being taught to the public." *Id.

SUITS FOR INFRINGEMENT. See Interference, 65; Validity of Patents, 1. 1. REVIEW BY SUPREME COURT-PATENT INFRINGEMENT SUIT INFRINGEMENT NOT CONSIDERED.--"Since we conclude that the Grebe-Sanford patent is invalid for want of invention, we need not consider respondent's cross-petition raising questions as to whether respondent's process infringed the patent." The Dow Chemical Company v. Halliburton Oil Well Cementing Company, Halliburton Oil Well Cementing Company, v. The Dow Chemical Company, 554.

8

2. CERTIORARI.-Certiorari granted because of the public importance of the issues involved. Precision Instrument Manufacturing Company, Larson, and Snap-On Tools Corporation v. Automotive Maintenance Machinery Company, 582.

3. EQUITY-CLEAN HANDS.-"The guiding doctrine in this case is the equitable maxim that 'he who comes into equity must come with clean hands.' This maxim is far more than a mere banality. It is a selfimposed ordinance that closes the doors of a court of equity to one tainted with inequitableness or bad faith relative to the matter in which he seeks relief, however improper may have been the behavior of the defendant." Id.

4. SAME-SAME.-"This maxim necessarily gives wide range to the equity court's use of discretion in refusing to aid the unclean litigant. It is 'not bound by formula or restrained by any limitation that tends to trammel the free and just exercise of discretion.' * * * Accordingly one's misconduct need not necessarily have been of such a nature as to be punishable as a crime or as to justify legal proceedings of any character. Any willful act concerning the cause of action which rightfully can be said to transgress equitable standards of conduct is sufficient cause for the invocation of the maxim by the chancellor." Id. 5. SAME-SAME.-PUBLIC INTEREST.-"Where a suit in equity concerns the public interest as well as the private interests of the litigants this doctrine assumes even wider and more significant proportions. For if an equity court properly uses the maxim to withhold its assistance in such a case it not only prevents a wrongdoer from enjoying the fruits of his transgression but averts an injury to the public." Id. 6. SAME-SAME. "Automotive has not displayed that standard of conduct requisite to the maintenance of this suit in equity. That the actions of Larson and Precision may have been more reprehensible is immaterial. The public policy against the assertion and enforcement of patent claims infected with fraud and perjury is too great to be overridden by such a consideration. Automotive knew of and suspected the perjury and failed to act so as to uproot it and destroy its effects. Instead, Automotive acted affirmatively to magnify and increase those effects. Such inequitable conduct impregnated Automotive's entire cause of action and justified dismissal by resort to the unclean hands doctrine." Id.