sole problem is whether the subject matter of claim 7 would be obvious to one of ordinary skill in the art as of the time the invention was made in view of the two main references.
As has often been said, this question of obviousness is necessarily a matter of subjective opinion. The question, however, is not whether it was obvious to the Examiner or the Board of Appeals or would be obvious to this Court, but whether it would have been obvious to men of ordinary skill in the envelope field. It seems to me that in this case the evidence answers this question in the plaintiff's favor beyond question. A mere inspection of the prior art, namely, the drawings and specifications of the two 1915 patents, makes the prior art appear to be deceptively close. In reviewing the specific limitations of claim 7, it is indeed difficult to put one's finger on the precise point at which it distinguishes from the prior art, yet, taken as a whole, as section 103 requires, it clearly does, and no one has alleged that it is fully anticipated by any reference. The argument is simply that, in view of the references, the subject matter of claim 7 would be obvious.
One of the most significant points brought out by defendant as to claim 7 is that it does not contain any limitation as to the direction of the folding of the flap along its central crease, which would require that the fold be made as shown by the plaintiff's application rather than in the opposite direction, as shown by the Wittmann reference.
However, it seems appropriate that claim 7 should omit any such limitation. Whereas Wittmann must fold his flap so that the 'V' formed by the first two flap sections when folded points outwardly from the envelope, the fact appears to be that plaintiff's invention can be practiced by folding the flap either that way or the opposite way, as he has described it, although for practical reasons, it seems best to fold plaintiff's flap with what might be described as a wraparound fold, as shown by the exhibits of commercial envelopes which were introduced in evidence.
This point, however, is but a single element in the attempt to take the plaintiff's invention apart bit by bit in order to show obviousness in each of its differences from the prior art. In determining patentability, however, we are not concerned with the obviousness of each bit when dissected out and after considering the applicant's disclosure, but with the obviousness of his whole invention as claimed.
I cannot escape the conclusion that the experts in the envelope art have themselves passed judgment on this issue, not so much in the commercial success which the invention has enjoyed in the form of large sales, but in the tribute paid to the invention by envelope manufacturers in taking licenses, even in the absence of an issued patent. To be sure, they did not cost too much, and in the event no patent issues, each licensee will be out of pocket only one hundred dollars. Nevertheless, they have incurred contractual liabilities in the belief that a patent may issue, and they have done this presumptively in the face of knowledge of the Wittmann and Steinke patents that issued in 1915, expired in 1932, and have been available to the public for free use ever since.
Another persuasive point was developed by the testimony of a witness experienced in the manufacture of envelopes, formerly employed by one of the larger envelope manufacturers of the country and now operating his own company, to the effect that it is not feasible to make the Wittmann envelope by modern methods on known envelope-making machinery. One reason given for this was that Wittmann requires two glue strips at separated locations on his flap. It can be argued, of course, that one of these can be eliminated by omitting the flap extension which is used to seal the envelope when it is sent out for the first time, and that this, in turn, would be but to omit the function of that flap, but there is no suggestion for making such an omission. It can also be argued, as it was forcefully argued, that it would be obvious to put a window in Wittmann's windowless envelope and then adjust the length of his flap and the location of his glue so as to meet applicant's claim. There is, however, no suggestion for doing this.
On the whole, therefore, and bearing in mind the rule that the evidence must be clear and convincing and carry thorough conviction that the Patent Office erred in refusing the patent, I am of the opinion that claims 7 and 9 are patentable, the latter without regard to its final limitation.
Judgment is, therefore for the plaintiff.
This opinion may stand as containing the necessary findings of fact and conclusions of law.
n1 Judge. U.S. Court of Customs and Patent Appeals, sitting by designation.
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