The opinion of the court was delivered by: RICH
This action was brought under 35 U.S.C. § 145, by virtue of which this Court has jurisdiction of the parties and the subject matter.
The plaintiff, Sol Harpman, asks the Court to authorize the Commissioner of Patents to grant a patent to him on his application, Serial Number 392,126, filed November 16, 1953, entitled 'Send-and-Return Envelopes.' Claims 3, 4, 7, 8 and 9 are put in issue by the pleadings.
The title of the application is fairly indicative of the nature of the subject matter of this invention, which is described in the opening paragraph of the specification as relating to a send-and-return envelope of such type that the same envelope can be used for correspondence from the sender to the receiver and from the receiver back to the sender.
To this end, an important part of the envelope is a flap having a central crease along its length so that it can be folded approximately in half and tucked into the open side of the envelope, which is of the kind having a window in that side which is opposite the side to which the flap is attached.
The parts are so dimensioned and proportioned that when the folded flap is tucked into the envelope, it does not obscure any part of the window. The unfolded flap has a line of glue along at least a part of the edge which will face the envelope when the flap is folded down against it, and this glue is so arranged as not to overlie any part of the window.
The plaintiff, who testified as a witness, is experienced in the envelope business in both the manufacturing and selling aspects of it, having been so engaged continuously since 1931. He and other witnesses established to the satisfaction of the Court that envelopes made in accordance with his invention have gone into commercial use in a very substantial way.
The somewhat unusual, if not remarkable, aspect of the case is that after Harpman filed his patent application and after showing his invention at one envelope manufacturers' convention, sending out one form letter under the name of Sol Harpman Enterprises, and after the invention had been described in one specialized publication, he was able to obtain eighteen licensees who executed formal license agreements providing for a down payment of one hundred dollars and for royalties of from twenty cents to thirty cents per thousand envelopes, which royalties were, as he testified, to be held 'in escrow' until such time as he might obtain the issuance of a patent.
The evidence shows that pursuant to these license agreements the licensees render reports of their sales, including the names of their purchasers or customers, from which data it appears that during a period of six years from eighteen to twenty million envelopes embodying the invention have been sold, over four million seven hundred housand having been sold in the year 1958, with prospects for the year 1959 in excess of five million.
The broadest claim in suit is claim 7, which reads as follows:
'A send-and-return envelope comprising, a pocket portion formed by back and front sheets joined at bottom and side edges thereof, means forming an opening in said front sheet through which an address on the contents of the envelope will be visible, a flap attached to the free upper edge of said back sheet and of sufficient width to extend down over said opening with a very small portion below said opening, a strip of glue along the edge of said flap, said flap having a central crease along the length thereof to enable said flap to be folded inside the envelope over the contents thereof without extending down to said window, and means forming a return address on the outside of said flap.'
Claim 9 contains two additional limitations: First, that the strip of glue shall be of substantial width over a portion of its length but diminished where said flap covers said window; and second, a somewhat ambiguous limitation, for lack of proper antecedents, reading, 'and means for joining said top edges.' This is the final clause in the claim. It is not difficult, after studying the disclosure of the specification in conjunction with the drawings forming a part thereof, to discern that the last-mentioned limitation of claim 9 refers either to an adhesive sticker placed over the open mouth of the envelope of a staple driven through the edges adjacent to the open side.
During the trial plaintiff made it clear that he does not rely on said last-mentioned limitation in urging the patentability of claim 9.
There are also in the case dependent claims referring back either to claim 7 or claim 9, namely, claims 3, 4 and 8, which merely add to their parent claims the said limitation with respect to the staple or the gummed label. These dependent claims have been ...