an intention to claim that an alternating current would produce a pile coating or surfacing which a direct current would not do. Even if the claims under consideration involving this feature were not vulnerable on the ground that they enlarge the claims otherwise, they would not be proper in a reissue patent.
It is further asserted by plaintiffs that the original invention here discloses a long sputtering electrode. No claim was specifically made dealing with its description or inherent advantages. It is asserted that, with respect to this feature, the Examiner and Board of Appeals disallowed the claims relating thereto on the ground that "the shape of the electrode is deemed a matter of design," and this notwithstanding the allowance of a claim in a subsequent patent, not here involved, that a length-wise electrode as distinguished from the theretofore employed transverse electrode is invention. Again, without regard to the claim in the patent not now before the Court, and considering only this feature as a proper claim for a reissue of the original patent that is before the Court, it appears from the drawings, particularly figure 3, that it is contemplated and shown that the flock accumulates with increasing density on the conductor as it proceeds along the length of electrode 8. No specific claim is made in the patent that the longitudinal position of this electrode 8 serves the purpose of building up the coating, which could not be accomplished by an electrode positioned transversely to the conductor being coated.Indeed the specifications rely upon variation in the strength of the electrical potential and an alteration in the speed with which the conductor being coated is passed through the container to regulate the thickness of the insulating layer. It is true, as the Examiner and Board of Appeals say, that the shape of the electrode is a matter of design, but if such design inherently accomplishes something which it would not if designed differently, it seems to me that presents a situation in which relief might well be sought under the reissue statute. In the situation now being considered, there is no new element in the original invention, no changing of position of elements to produce an end different from that contemplated by the original invention, but there is a result inherent in the design shown which could not be accomplished by a different design. Whatever virtue there may be, however, in the claims relating to this feature, such claims are so inextricably involved with other features therein that they cannot be allowed.
The plaintiffs insist that what was intended to be secured by the original patent may be determined by recourse to his original claims rather than by reference to the invention as set forth and described in the original patent. Claim No. 1 in the application for the original patent is typical of the original claims: "1. An insulating method for electric or thermo-technical purposes, consisting in electrically charging the individual fibres and particles of the insulating material through one pole of a high voltage source, so that they deposit on bodies which are connected to the other pole of the high voltage source."
The meaning of the term "the same invention," as used in the reissue statute has been the subject of much controversy. "But the Supreme Court put a period to the controversy in the case of the Parker & Whipple Co. v. Yale Clock Co., 123 U.S. 87 [8 S. Ct. 38, 31 L. Ed. 100]. That decision adopted the last of the above stated constructions, and thus established the meaning of the phrase 'the same invention' to be whatever invention was described in the original Letters Patent, and appears therein to have been intended to be secured thereby.This rule has been repeatedly reaffirmed and reapplied by the Supreme Court." Walker on Patents, Deller's Edition, Vol. 2, Sec. 310. That the question is still at rest is made very clear in United States Industrial Chemicals, Inc., v. Carbide & Carbon Chemicals Corp., supra. It will be noted, however, that even in claim No. 1 above mentioned, it is contemplated that the deposit of the insulating material be on bodies which are connected to the other pole of the high voltage source.
In the view taken, there is no occasion to consider the disallowance of certain of the claims upon the ground that they are not patentable over the prior art. The only significance which the references to the prior art have in the case, as it is now postured, is that the applicant in the original patent, by his attorney, may well have considered it desirable to so limit the disclosures and claims, which finally found expression in the original patent, that asserted collision with the prior at could more effectively be avoided. Be that as it may, the claims under consideration must be compared to the invention as described in the original patent and what appears therein to have been intended to be secured thereby for the purpose of determining the sameness of invention.
For the reasons stated, the relief sought cannot be granted, and the complaint is dismissed.
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