Bird v. Elaborated Roofing Co. of Buffalo

HOUGH, Circuit Judge (after stating the facts as above). [1] The effect of the Patent Office proceedings in interference is not doubtful; they settled, on the record there made, that, assuming identity in the assumed inventions of Bird and Becker, the former was the prior in time. National, etc., Co. v. Wheeler, etc., Co., 79 Fed. 432, 24 C. C. [372] A. 663. They did not finally establish that either party had, in common speech, invented anything, although of course an interference would have been impossible, had not each party declared on oath his claim to a patentable invention. This rule rests fundamentally on the interest of the public in every grant of monopoly, even the most beneficial. Whether, under the circumstances shown, defendants (who are the Becker of the interference and his creatures) are not estopped or in some way prevented from presently urging that Bird, if he first invented anything, invented something different from the result of Becker's ingenuity, is a question we shall not consider, preferring to examine the merits of this record. ' Since the new evidence as to priority introduced at the trial of this case has not warranted argument to us on that question, we assume priority in Bird. [2] As to identity, it is enough to refer to the opinion in the West Coast Roofing Co. Case, supra. We do not assert that the judgment therein binds us in respect of this litigation, nor overlook arguments based on the peculiar way in which the relative merits of Bird and Becker were there made an issue; but we do concur in the result there reached after very prolonged discussion of a record identical on this subject with that before us, viz. that Becker, and Bird in his “overlay” patent, made exactly the same contribution to the sum of human knowledge. As to the patentability of both the grants before us, there is nothing to add to Judge Hazel’s discussion of the prior art as revealed by older patented inventions. We note, however, that in this court new or greater stress is laid on Hebblewhite, No. 322,601, as anticipating the “branding” patent. The argument is an endeavor to import into the art of roofing an anticipation from that of floor covering. S’uch contentions are legitimate and oftentimes succeed. The question is of fact, and it is impossible to appraise items of evidence so that they always pass current at some standard value, as do sterling coins. In this instance, we regard the similarity as very forced, and the remoteness of the arts so obvious as to negative the thought that any one, desiring to produce a design roofing, would gather even inspiration or suggestion from a patterned floor cloth. The real and substantial question as to patentability does not rest on a meticulous comparison of this or that old patent, but on consideration of the query whether, assuming in, especially, Mr. Bird a long and intimate knowledge of the kind of roofing first above described, there was room for a mechanical product patent covering an ornamental variant of an old article of manufacture, when no change in roofing efficiency was sought or reached, and the means of ornamentation were so simple as are disclosed in both the patents in suit. Solution of this question (always remembering the presumption in favor of invention, slight though it be) must be reached by consideration of the ample evidence before us, showing the existence of a real demand for a design roofing, and the failure of ornamental ad373 dilions produced by any mateidal less durable or unchanging than the waterproofing surface itself. By means very simple, but truly mechanical, and novel in their application, Bird solved the problem in two ways, and received two patents for so doing. He did more than put a design on roofing; he showed how to do it. Therefore he was and is entitled, not only to patent protection for his method, but for the result of his method, if both result and method were new. We reach this conclusion without any reliance on the doctrine of commercial success (which might well be invoked), and without being consciously affected by the obvious, and indeed admitted, fact that Becker, after fighting for six years to get Something from Bird which they both called “invention,” now discovers the acidity of the grapes, and says there was no invention after all. [3] It is also urged that under section 4904, R. S. (Comp. St. § 9449), the Patent Office had no jurisdiction to “grant a second patent for the identical invention, * * * and such second grant is void.” This means that, Becker having once gotten a patent, it was beyond the Commissioner’s power, by or after interference or otherwise, to grant Bird’s patent containing Becker’s single claim. For this contention we are referred to decisions holding “that no patent can issue for an invention actually covered by a former patent” (e. g., Miller v. Eagle, etc., Co., 151 U. S. 186, 14 Sup. Ct. 310, 38 L. Ed. 121), and it seems to be thought that some constitutional rights are involved or infringed. All patent rights are statutory; the constitutional grant is merely a power to secure for limited times to inventors the exclusive right to their discoveries; Congress may exercise the power or refrain from so doing, and, if it does exercise the same, all grants of privilege are at the peril of the law creating them. Section 4904 expressly provides for interference with an existing patent; it was law when Becker applied for his patent; therefore he took subject to the possibility of just what happened, and has no right to complain. Whether such a statute as section 4904 could affect patents issued before its passage is a question not before us. [4, 5] We thus agree with the court below that both patents in suit are valid, and that the overlay patent has been infringed; but there is only one infringing article proved, viz. an overlay design roofing which exactly responds (as would be expected) to the claim devised by Becker’s solicitor and awarded to Bird after interference. We are of opinion that infringement by that article of the “branding” patent was declared by inadvertence. [6] It is true that the single claim of that patent is so broadly drawn as to read on any roofing showing contrasting “lines and areas”; such contrast being produced by the “embedding” of some mineral particles in the asphaltic covering more deeply than other particles. But a broad claim does not extend invention; and if an inventor discloses one means, a statement that he does not confine himself thereto’ will per se certainly not justify a claim covering all means. Outlook, etc., Co. v. General, etc., Co., 239 Fed. at 879, 153 C. C. A. 5. [374] In this, as in many other instances, the proper inquiry is, «/hat does the disclosure of the “branding” patent teach? It tells bo-’' to malee “branded roofing,” and gives no other information to the man skilled in the art. It states that the branding may result from heat, pressure, or the application.of a solvent; beyond that there is not even the .ft-referred to “pious aspiration.” Therefore we do not think that Mr. Bird himself ever dreamed that his “overlay” roofing would (if made by a stranger) infringe his “branding” patent, and, if such is the case, Becker’s product in eiddence does not infringe. The decree appealed from is modified, by denying infringement of valid patent No. 1,036,427, and, as modified, affirmed, without costs.