The opinion
KNAPPEN, Circuit Judge
(dissenting). I am unable to agree in the conclusion of the majority opinion, which reverses the decree of the District Court (which found the machine patent — No. 1,128,145 — invalid, if infringed by defendant), and directs decree for injunction and accounting based on that patent, and dismissal of the bill without prejudice as to the method and workholder patents.
I am constrained to agree with the opinion of the Circuit Court of Appeals of the Seventh Circuit in the Gibbons Case, 25 F.(2d) 363 to 366, inclusive, which holds the machine patent (as well as the workholder and method patents) invalid for lack of invention. The statement of reasons and the logic of the Circuit Court of Appeals of the Seventh Circuit in finding those patents invalid, both as stated in the original opinion (pages 364-365) and in the per curiam opinion (pages 365-366), seem to me convincing.
This makes it unnecessary for me to discuss the art prior to Inwood and Lavenberg, except to say that while in making the ’boxes by hand, preformed separate sheets and premitered cleats had been used before the patents in suit had been applied for, they were not regarded as practicable for machine manufacture. It remained for Inwood and Lavenberg to discover that the use of such preformed separate sheets and premitered cleats in machine manufacture was practicable. This use of preformed separate sheets and premitered cleats runs all through the four patents. The contrast between the method of manufacturing wirebound boxes under the patent and the then present method is plainly set up in the reissue patent No. 12,275. The drawings of the patent, in connection with the language of the specifications, clearly indicate the process to be employed in making the product of the patent. The claims of the reissue patent seem to me to indicate plainly to one skilled in the art the process to be employed. As concluded in the original opinion of the Circuit Court of Appeals of the Seventh Circuit in the Gibbons Case, 25 F.(2d) at page 364 : “The entire story of the appellee’s invention is told in this reissue patent, and that the solutions of the problems demonstrated in the other three patents were obvious, and involved the exercise of m'erely ordinary mechanical skill”; and as stated in the per curiam opinion, 25 F.(2d) at page 366 : “It [the reissue] was the culmination of their [patentees’] efforts, and therein lies the entire story of their invention, as we have stated in the original opinion.” Upon the theory of that opinion, the question of eopending application as prior art is not involved. Nor am I impressed that the validity of the machine patent is governed by the rule that generic and specific inventions may, at the option of the patentee, be secured by separate patents. The controlling objection is not that there has been double patenting, but that there is lack of invention in the machine patent. As stated by the Circuit Court of Appeals of the Seventh Circuit, 25 F.(2d) at page 366 :
“The moment the long cleat was discarded and supplanted with short ones, 10 the work-holder and machine readily appeared as the logical solution of the mechanic to the problem confronting him. We cannot believe that in this situation invention was achieved, or that anything more than the exercise of mechanical skill was involved. Novelty and utility in the combination did not arrive until a further improvement was made, that of preforming the side materials and so arranging them that they would overlap. This last step accomplished an improvement, and the patent for the combination, with this improvement, was by us sustained.”
Nor is it important that, as asserted, the workholder and stapling machine inventions were conceived earlier than the reissue box patent; because previous to the invention of the box patent the other two inventions were wholly impracticable. After that invention they became useful, hut only by virtue thereof.
In view of what is above stated as to the validity of the machine patent, the question of validity of the method patent (No. 1,128,252) is perhaps not very important as the issue is developed on this present review. It would seem enough to say that, in my opinion, the method patent is invalid for the further reason that it is for the process which results in the product which is covered by the reissue patent. Mosler Safe & Lock Co. v. Mosler, Bahmann & Co., 127 U. S. 354 , 8 S. Ct. 1148 , 32 L. Ed. 182 ; Miller v. Eagle Mfg. Co., 151 U. S. 186, 187 , 14 S. Ct. 310 , 38 L. Ed. 121 . Nor does the rule forbidding priority in case of eopending applications apply to this defense. Indeed, in Mosler Safe & *843 Lock Co. v. Mosler, Bahmann & Co., supra, the applications were cop ending. The question as presented in the instant case is readily distinguishable from Century Co. v. Westinghouse Co. (C. C. A. 8) 191 F. 350 , 352 et seq. The conclusion that the method patent is invalid for the other reason herein suggested makes it unnecessary to consider the correctness of Judge Raymond’s holding that the patent is invalid by reason of delay in filing divisional application; nor the effeet upon that defense of our decision in MacGregor Co. v. Yaco Grip Co., 2 F.(2d) 655 . Nor is it necessary to consider the question of infringement by appellees as to either patent.
Italics mine.