Full opinion text
R. DORSEY WATKINS, District Judge. This is an action for alleged infringement of three patents, all relating to the “Manufacture of Electric Circuit Components.” The plaintiff Technograph Printed Circuits, Ltd., is a British corporation which by mesne assignments from the inventor, Paul Eisler, is the owner of the patents in suit. The plaintiff Technograph Printed Electronics, Inc., a North Carolina corporation, is the exclusive licensee under said patents, with right to license others. Ordinarily the two companies will be referred to as plaintiffs. The defendant, The Bendix Corporation (formerly Bendix Aviation Corporation), is a Delaware corporation with an established place of business within the District of Maryland, and is alleged to have committed acts of infringement within this District. Jurisdiction was adequately proved, and is admitted. Narrative Background. The inventor, Dr. Paul Eisler, was an Austrian subject. His earlier education was in the electrical field. His first professional activity was for a British firm working on radio equipment installed in Yugoslavian trains. Later he worked for an Austrian manufacturer of radio and other electrical communication equipment; founded and edited a paper for amateur builders of wireless sets; and set up a small laboratory for the construction of amateur wireless equipment. All this work was on the “point-to-point” wiring system, the prefabricated “components” being mounted on a supporting frame or chasis and connected by individual wires soldered, clipped or otherwise attached from point to point. In 1936 Eisler, then twenty-nine years old, came to England to work on certain aspects of television, intending ultimately to return to Austria. The Nazi rise prevented this, and Eisler secured employment with a chain of cinema theatres, working on sound and picture projections. In 1940 he was interned but was released in 1941. His alien status made employment a problem. He claims that after Churchill’s appeal for individual effort in winning the War, he decided that his greatest help could be in the field of the production of electronic equipment. He revived his interest in “printed” circuits, upon which he had first worked in 1936, at which time he had painted circuit lines with adhesive paint, and stuck gold leaf thereon. Eisler ultimately interested the managing director of an old London firm of printing engravers, whose plant had been bombed out. Music printing was not an essential war production, and new equipment could not be obtained for that purpose. With what was available, Eisler began his experiments, at first alone, but later in 1943, with another Austrian whom Eisler had helped to escape. Many methods were tried, using existing printing equipment and skills — including “printing” with an ink which would become conductive on drying; spraying powder and molten metal onto an adhesive ink; chemical deposition with blocking out by a negative and electroplating ; punching out a pattern from metal foil; the use of fusible metal and “detinning”; and the use of prefabricated “foil” , adhered to an insulating medium. Rolled copper, aluminum, steel and copper-nickel foils were available, but hard to obtain. The cost of rolling foil in the desired width was prohibitive, and later Eisler manufactured his own foil by the electrolytic process developed by Thomas Alva Edison. Rolled or electrolytic foil was then bonded to insulated paper or a laminate (bakelite). The bonding qualities of electrolytic foil were and are superior to those of rolled foil. Eisler made a three “valve” (tube) printed circuit radio receiving set using a well-known circuit. The testimony is to the effect that the set worked, and was used to receive broadcasts of the Allied invasion on D-Day. It was introduced in the trial of this case as an exhibit, but was not in working condition, and apparently no effort was made to make it workable during the extended trial. Prior to D-Day efforts were made to have the alleged printed circuit methods adapted to war production. Despite the alleged existence of the Eisler radio, and of demonstration “books” of sheets of copper clad laminate processed through successive stages of manufacture (none of said books having been located or offered in evidence), the British Government was completely non-receptive. After VE-Day, efforts were made to interest commercial manufacturers. None of the radio manufacturers could be persuaded to change its methods of production. With the exception of strain gauges “dealt with in quantities of tens or hundreds of thousands” no commercial production was secured in England prior to about 1955. The printed circuitry, allegedly invented by Eisler, with which the case is principally concerned, essentially consists of a “printing” step by which a circuit network is delineated on the face of a preformed insulating sheet. The unwanted metal is preferably dissolved in an etchant, after which external components may be joined by insertion, manual or machine, and soldering may be effected manually, or in certain instances by dipping or flow soldering. Eisler British Patents. On February 2, 1943, Eisler filed his first provisional specification (1749/43). An additional provisional specification was filed on April 3, 1943. A complete British specification was filed on February 2, 1944, and a corresponding United States application, Serial No. 520,991, was filed February 3, 1944. Eisler’s British Patent Agent (O’Dell) testified that the original British complete specification is identical with the specification of United States application Serial No. 520,981. The history of the English prosecutions is unusually significant in its bearing upon the validity and scope of the American patents. The Eisler British applications were filed without any search of the prior art having been made. Eisler and his British Patent Agent were under the impression that Eisler was the inventor of the printing of electric circuits by any method (O’Dell deposition, page 63); that Eisler could “probably more or less monopolize printed circuits; not only the foil technique, but a lot of processes could be used for some particular limited usage.” (Eisler deposition, page 225). The printing and etching technique was only one of the many techniques disclosed as equivalents. In the first Office Action, of July 13, 1944, in United States Application Serial No. 520,991, the Examiner cited art disclosing manufacture of electrical circuits by some of the methods of the printing art disclosed and broadly claimed by Eisler. In November 1946 the British Examiner cited a number of pertinent references against the British complete specification. These will later be discussed. As a result, it could no longer be said “that the idea of printing electric circuits was new,” and “the application fell into bits” (O’Dell, page 63); “fell apart” (O’Dell, page 81). Accordingly the complete specification (British 639,111) was amended in disclosures; certain prior art was acknowledged and expressly disclaimed; and the application was limited in claims to flexible printed circuitry produced by the etching technique. As so limited it issued (“Complete Specification Published”) June 21, 1950. A divisional application was simultaneously issued as British Patent 639,-178, limited in disclosure and claims to the production of printed circuits in which ink was applied as the resist material. Reference to formation of the resist pattern by photographic means was omitted as not required to support the limited claims. Certain prior art was again expressly acknowledged and disclaimed. A second divisional application also simultaneously issued as British Patent 639,179, limited in disclosure and claims to a method in which ink containing a readily fusible metal pigment was applied to insulation, and the metal subsequently consolidated by heat. In connection with the prosecution and allowance of the United States patents, it is noteworthy that (a) the specifications (disclosures) were not changed (except as noted); (b) no acknowledgment of prior art, disclaimed in the British patents, was made; and (c) with one exception, and that late in the prosecution of the second (’568) patent, none of the art disclaimed in Eisler’s British patents was cited. The significance of this is emphasized by the fact that British Examiners search only for anticipation and double claiming, questions of obviousness in view of the teaching of the prior art being left to the courts. The United States Patents. The first Eisler application for a United States Patent, Serial No. 520,991, was filed Feburary 3, 1944. Patent No. 2,441,960 (hereafter ’960) issued on May 25, 1948 and is in suit. On February 27, 1948, a divisional application 11,798 was filed, out of which Patent No. 2,257,-568 issued on February 26,1952, and was subsequently reissued on June 12, 1956 as United States Reissue 24,165 (’165) in suit. Divisional Application 11,798 was further divided by Application 261,-989, filed December 17, 1951, and issued on April 15, 1955 as Patent No. 2,706,697 (’697) in suit. Patents ’960 and ’697 were each granted for the normal statutory term of seventeen years; 35 U.S.C. § 154. Patent ’568, however, was granted for a shorter term in accordance with the provisions of the Boykin Act, Public Law 690, August 8, 1946. Accordingly, ’165 expired February 2, 1963. Claims in Suit — Defenses. The patents in suit, the claims declared on by plaintiffs, and the “example” claim or claims are: Patent ’960: No. 2,441,960 dated May 25, 1948: claims 1 and 2; example claim, 1. Patent ’165: No. Re. 24,165 dated June 12, 1956 (Original No. 2,587,568 dated February 26, 1952); claims 1, 2, 6 and 7; example claims, 1 and 7. Patent ’697: No. 2,706,697 dated April 19, 1955; claims 4, 5, 10, 14, 15 and 16; example claims, 4, 5 and 10. (For convenience and eye-relief the pertinent portions of the specification of ’960, and the declared on and example claims are filed as an Appendix, which includes also the declared on and example claims of ’165 and ’697, with a reference to the manner in which their specifications differ from those of ’960). Defendant in its answer: 1. Denies infringement. 2. Alleges invalidity of all three patents, and all of their claims, and specifically, that: a. ’165 is void for double patenting over ’960; b. ’697 defines nothing patentably distinct over '568 (of which ’165 is a reissue), and over ’960. c. ’697 is void for laches in claiming the subject matter of the claims, particularly in view of intervening public use. d. ’697, and especially claim 5 thereof, fails to define an operative process. (85 U.S.C. § 112). e. All three patents are void in view of obviousness, in the light of the prior art, to a person having ordinary skill in the art. " 8. Alleges that all three patents are unenforceable for the reason that the claims were prosecuted and allowed to issue “without bringing to the attention of the United States Patent Office prior art, negating invention in said claims, which was then known to” ' plaintiffs, their predecessors and privies. 4. Alleges that all three patents are unenforceable due to misuse. 5. Alleges that the three patents are invalid because Paul Eisler was not the original and first inventor of the subject matter patented. 6. Seeks a decree that the three patents “are invalid and void as to all claims thereof * * Late in the case defendant made clear its intention to defend also on the ground of anticipation, 35 U.S.C. § 102. The answer was not amended, but the case was tried, argued and briefed on this and the other defenses. Contentions as to Scope of Claims. Plaintiffs and defendant are in agreement that the claims in suit are all method claims, but are substantially in disagreement in all other respects. Plaintiffs’ Position. Plaintiffs contend that: None of the claims “reads” on a standard photo-engraving technique. None of the claims calls merely for the etching of foil. “The use of an etched foil technique is, however, an essential and vitalizing part of the Eisler inventions. * * * ” “Nor are the claims addressed to processing details such as the composition of the resist or the kind and strength of the etchant to be employed.” Patent ’165. “The underlying concept of Patent ’165 is of a new and better way of making circuit assemblages * * ” It is claimed that various alleged infringing devices of defendant “are built according to the teachings of Patent ’165, commencing with the making of a circuit network by printing and etching a piece of insulation-backed foil, with provision made for the joining-in of external components at pre-arranged junction points, the insertion of the component leads at the junction points, and the making of metallic joints between the leads and the circuit network.” Patent ’960. Where it is unfeasible or uneconomical “to create the entire etched-foil circuit network on one side only of an insulating panel” because some of the tracks would cross others and thus cause short circuits, the ’960 patent “enables the circuit manufacturer to create different parts of the etched foil circuit complex in parallel planes, insulated generally from one another by the insulating backing and hence permitting of ‘crossing’ conductors, and with electrical connections through the backing for electrically joining conductors in different planes where desired.” Patent ’697. “Two inventions — the negative imprint process and the transfer process — are covered by Patent ’697.” “By the use of the negative imprint process the most complex circuit networks, consisting ’ of etched foil with an overlying coating of a dissimilar metal, can be made. * * * It is achieved in the ’697 process by making a negative imprint of the desired circuit pattern with a plating resist on a sheet of insulation-backed foil, electroplating the exposed foil areas with the desired dissimilar metal, removing the plating resist, and then etching away the new-exposed foil with an etchant which attacks the foil but does not attack the plated metal. In this method the foil, which remains a continuous and unitary sheet of metal throughout the plating operation, serves as a common cathode for all the metallic areas which are ultimately to be electrically separate in the completed network.” In the transfer process, a “negative imprint is made on a piece of copper foil and silver is electrodeposited on the copper which remains exposed; the resist is removed, the foil is laid upon a sheet of partially cured plastic with the silver pattern at the interface; the assemblage is subjected to heat and pressure, resulting in the silver pattern becoming embedded in the plastic and the plastic being cured; the foil is then etched away, leaving the silver pattern exposed and flush with the surface of the plastic in which it is embedded.” Defendant’s Position. Defendant’s position is stated as follows : “Significantly, the claims of the ’960 patent and Reissue 24,165 rely upon precisely the same disclosure. Although issuing subsequent to the ’960 patent, the claims of the ’568 patent and U. S. Reissue 24,165 are directed broadly to a method for production of ‘printed circuits’ by well known techniques admittedly borrowed from the graphic arts. Stripped of apparatus limitations inserted in a demonstrably futile effort to distinguish over prior use of these same techniques for the same purposes in the electrical art, the claims of the Reissue patent recite the following simple process steps: “(1) ‘printing’ a representation of the desired conductive patterns in an acid resistant medium on the metal surface of a suitably metallized insulating material; “(2) etching away the metal not covered by the resist pattern, and “(3) making electrical connections to the conductive pattern thus produced. “The claims of the earlier issued ’960 patent cover no more than a process wherein two circuit parts produced in accordance with the claims of the Reissue Patent 24,165 are superimposed back to back and electrical connections are made between the two parts through the interposed insulation. “The third patent in suit, Eisler 2,706,-697, is directed to two somewhat nebulously disclosed processes also acknowledged as old in the graphic arts, viz: “The Metallic Resist Process. “(1) A negative representation of the desired conductive pattern initially is formed in resist on the metallic surface of a metallized insulator followed by deposition of dissimilar metal on the portions not covered by the resist. The original resist is then removed and the thus uncovered orginal metal is etched away to leave the desired conductive pattern. “The Transfer Process. “(2) The desired conductive pattern initially is produced on a temporary support, conductive or non-conductive, and then in a wholly undisclosed fashion, is transferred ‘in accordance with the methods of the printing art’ to a permanent support which may be glass.” United States Patent Office Procedure. By way of summary, it may be stated that the original claims of all three patents in suit were initially unhesitat-. ingly rejected on the prior art. By the “ant-like processes” of plaintiffs’ solicitors, and after conferences of Eisler and his then attorneys with the Examiner, the nature of which were not indicated in the respective File Wrappers, as is customarily the case, the claims in suit were ultimately allowed. It is, unfortunately, necessary to consider, almost ad nauseam, the history of the patents in the Patent Office. This is true for a number of reasons: (a) a consideration of the cited prior art; (b) the significance of the distinctions urged, and apparently accepted, by plaintiffs in attempting to distinguish the prior art; (c) the omission of citation of prior art; and (d) the emphasis, in the Patent Office, upon the meanings of “printing” and “foil.” If this and the following detailed consideration of the prior art may appear to be labored, the court suggests that the complexity of procedures before the Patent Office, and in the trial of the case, permit of no short cuts. ’960. The application (based on the British application filed February 2, 1943) shows that Eisler represented himself as a pioneer inventor in the printed circuit field. The specification and the original claims indicate that the emphasis was upon the making of proper drawings, the preparation of printing plates from the drawings, and the production of metallic patterns corresponding to the patterns of the printing plates. Also emphasized was the production of at least two drawings and two printing plates, each containing only a portion of the circuits and circuit connections; and after completion of the two or more metallic patterns, the superimposing of the patterns back to back, and the interconnection of the patterns through an insulating base to make crossing connections. • The actual steps of proceeding from the printing plates to the final metal patterns were not specifically indicated; any of those well known to the printing art being indicated, apparently as equivalents. Likewise, the etching may be done in the well known manner of the printing art. The essence of the patent is stated to be: “It will be seen that the essence of the particular method of producing circuit components just described is the preparation of a printing plate, the printing from it of a representation of the conductors of the circuit component, thereby differentiating on the printed surface the areas which are required to be conductive from those which are required to be non-conductive, and the subjecting of the surface to an after treatment which operates differently on the differentiated parts and converts the differentiation into a differentiation of conductive and non-conductive areas. The imprint made is a positive imprint, that is to say the inked part represents the conductors of the component; and the imprint is made on metal; and the component is completed by removal of metal from the unprinted areas. It will be seen below that it is not essential that the imprint be positive, nor that the imprint be made on metal, nor that the component be developed by removal of metal.” However, as indicative of Eisler’s belief in the pioneer nature of his invention, as encompassing all types of “printed” circuitry, and which soon plagued him in his British applications, and also in the United States Patent Office, he stated that it was not essential that the imprint be made on metal; or that the circuit component be developed by the removal of metal. Various alternative, and apparently equally satisfactory and equivalent methods, were recited. E. g.: (1) Printing on metal foil upon a conductive backing of another metal, the transfer of the conductor to a permanent base, after which the unwanted backing may be removed by electrolysis or “otherwise.” (Column 6, lines 39-48.) (2) The metal foil, instead of being removed “wholly” may be converted into a non-conductor by anodizing. (Column 6, lines 48-54.) (3) The circuit component may be produced by adding metal. The printing plate prints a negative of the circuit component, and additional metal, such as copper, may be added to the exposed portions by electrolytic deposition. (Column 6, lines 62-68.) (4) The printed foil may be coated by galvanization. (Column 6, lines 67-74). (5) A positive imprint of the circuit component may be made by adding metal to the printed surface not requiring the print to be made on metal; that is, it may be made in sticky ink on an insulating ground, and the imprint may be “metallised” in various ways: (a) Metal- leaf may be applied to the printed ground, and the non-adhering parts removed by dabbing. (Column 7, lines 13-15.) (b) Metal powder may be dusted and consolidated (Column 7, lines 16-21) by spraying with a molten or soft metal (Column 7, lines 23-31); or the dusted metal may consist of metals with a low melting point and a less readily fusible metal which unite by heating (Column 7, lines 31-42); or by galvanizing (Column 7, lines 43-44); or by heating in the vapor of a metal compound which readily dissolves (Column 7, lines 44-50). (c) Conversely, the printing plate may print a negative of the circuit component, and the imprint may be made in ink to which metal will not adhere, upon an insulating surface to which it will adhere, and thereafter metal leaf is applied or metal powder is dusted on and consolidated as previously described (Column 7, lines 60-68). As has been previously set forth, plaintiffs rely heavily upon the use of “foil” as an essential factor in the patent claims. The above summarized portions of the specification seem to negate this essentiality. In fact, the specification in its reference to “one form of the invention, convenient for the instance under consideration” (Column 4, lines 56-58), after referring to foil of the thickness and nature required, states (apparently defining foil) that “metallized or metal-coated paper is one material” (Column 4, lines 64-65); or “a metal coating may be applied to a pre-formed sheet of insulating material * * * ” (Column 4, lines 69-70). The original 19 claims each recited the step of preparing a printing plate and then printing a representation of some or all of the conductors. Claim 10, which after many amendments, became Claim 1 of the patent as issued, called for two drawings which together included all of the connections with overlapping junctions which registered when superposed, and called for perforations of the two sheets at points where required, superposing the two sheets, and making metallic connection between them through the points of perforation. In the first Office Action of July 13, 1944, all claims were rejected on Ducas, 1,563,731 , in view of Norris 2,282,-203 . Ducas was primarily concerned with the use of an electrolytic process for the manufacture of coils. He states that an object of the invention is “to provide a system in which sets of tools, dies and templets may be originally constructed from which electrical circuits and inductances may be struck off by processes of printing, painting or applications of decalcomania process, whereby a film of conductive material may be deposited or exposed upon a surface over which a conductive layer having extremely low radio frequency resistance may be deposited in the formation of the electrical windings and circuits.” Ducas also frequently refers to an object of the invention as being the production of “circuit connections between various pieces of electrical apparatus comprising the complete apparatus.” He discloses the use of a “blank” of metal (of unspecified thickness) over which a “film” of non-conductive material is coated; a spiral groove is cut by a turning lathe through the film; the exposed conductive material is electroplated, the remaining film of [non] conductive material is “scraped off or otherwise removed” and the blank melted away from the electro-plated spiral. The use of a decalcomania of conductive paste; the placing of plastic conductive material in grooves cut in non-conductive material, followed by electrodeposition; and the use of a “printing device” to print a spiral in conductive paste, followed by an electrolytic bath, are also disclosed. Of interest, although not mentioned by the Examiner, is the fact that Ducas discloses the formation of conductors on opposite sides of a panel; the use of a vertical and of a horizontal panel; the superposing of two or more panels; and “a, method which may be employed for interconnecting the circuits in different planes.” Norris ’203 is significant primarily in that it discloses the use over a fine screen of a deposited base of copper of “a substantial thickness, which, however, is not critical”; the laying on of a nickel layer of sufficient thickness to protect the copper from an etching agent; the application to the nickel of a coating of a light-sensitive shellac, resistant to the etching agent which is employed to etch the nickel; photoprinting a design on the coating by a plate exhibiting a positive of the design, the unprotected area being hardened and insoluble in water; washing in water, which dissolves the protected area and exposes the nickel previously covered; etching through the exposed nickel with an etchant that does not attack copper; continuing the step with an etchant which will attack copper but not nickel, and dissolving the copper to the point where the copper layer is etched free and clear of the lands of the base screen; i. e., deep etching through the exposed copper. The Examiner also cited patents to Spalding, 1,709,327 and Hohnan, [sic] 2,279,567. Spalding sought to prevent undercutting in the preparation of etched half-tone plates of relatively great depth, accomplished by several etchings or “bites”. The well-known use of a metal plate, coated with a light-sensitive coating, exposed, developed, hardened, and etched is followed, but thereafter a resist is applied to the sides of the etched figures to prevent undercutting. Holman taught the formation of closely spaced fine metallic lines and meshes by blocking out certain areas and electrodeposition therebetween. In rejecting a number of claims on Ducas, the Examiner pointed out that under Ducas: “ * * * The printing area may be made conducting or non-conducting as one may wish so that either a positive or a negative reproduction is formed. The folding over is an obvious expedient and it is immaterial what the shape or form of the conducting lines may be made to assume.” “ * * * Etching through a metal-layer as taught by Norris is an obvious-method of getting the design of Ducas.The two fundamental methods of obtaining a design is [sic] to form a continuous metal layer of the desired metal and-remove select areas by etching as taught-by Norris, and the method of Ducas in-which the metal coating is placed on select areas by a first plating step. These two are thought to be generally interchangeable without involving invention.” In the response, dated December 29, 1944, Eisler attempted to distinguish Ducas in that it was claimed that Ducas purported to make his imprint in conductive paste and effect an electrolytic deposition; that this did not include the final step of the Eisler process of subjecting the surface to a treatment of the differentiated parts changing the differentiation into a differentiation of conductive and non-conductive parts; and that Eisler’s research led him to believe that it was not possible to make a conductive imprint. In the next Ofiice Action, of June 19, 1945 the Examiner cited, and made of record, Baynes 378,423 without any discussion as to its application or teachings. Baynes was interested in ornamentation of metals, stone or the like, by producing recesses or perforations therein. Perforations of a thin plate of metal or marble may be effected by operating from one side only. In this situation one surface of the “plate” is prepared for the reception of the pattern which is applied in a coating .of acid resist, leaving exposed the parts to be etched. The resist pattern may be applied “by printing the same directly by the use of a lithographic press;” or by a transfer process; or the surface may be completely covered by a light-sensitive resist, parts rendered insoluble by photographic use of a proper negative, and the soluble portions removed. The edges and back are then coated with an acid resist, and the plate immersed in etchant, or exposed to fumes of an etching-acid. If the plate is too thick to be etched through •from one side only, patterns are placed on both sides, those on opposite sides being the reverse of each other. The remarks of the Examiner on the Eisler claims were rather caustic. He said in part: “ * * * There is no specific cooperation between the making of the printing plate, well known in the art, and the etching or removal of the unwanted parts of the metal. The one may be performed entirely apart from the other. In the first place the design may be applied by means other than a printing plate, for example, by hand or by a stencil. Furthermore, the printing plate has many uses other than for printing a resist on metal. For example, it may be used to print on paper. * * * “The claims are further rejected as being unduly multiplied. For such a simple invention, it seems that two or three claims should be ample to cover whatever patentable subject matter which [sic] may be present.” After an even more caustic reply by O’Dell, asking a reconsideration of all claims, the Examiner, in Office Action of October 14, 1946, added Seymour 1,647,-474 as an additional reference. In response to the argument that Baynes is not concerned with the making of electrical conductors, the Examiner recognized that this might be true, “but since applicant employs exactly the same steps as set forth in the reference, it is patentably immaterial that he performs his process with a different purpose in mind. The part of the claims ‘method of manufacturing electrical circuit components’ is merely introductory. Obviously, if applicant obtains electrical circuit components, the reference does also.” Seymour’s invention relates to means for transmission, reception and control of electrical impulses or wave motions, and particularly means constituting pathways as distinguished from circuits. A flexible, pliable insulating body is used, on which a pattern is formed “by any well known means” such as the placing thereon of lead, graphite, solution of copper or any other conductive material, which serves as the cathode for electrolysis. In specific examples, coils of right and left turns are so designed that they may be directly superimposed, with cross connections, and connections through the insulating sheets. Coils and condensers are shown, but these are said to be but a few of the many possible variations or forms. It is further stated that: “ * * * the deposit elements may be in the nature of disks or films of sheet metal * * The Examiner further rejected all claims as involving no invention over Seymour in view of Baynes. “ * * * Seymour shows the making of electrical conductors by depositing the metal in certain selected areas. To employ the etching method of Baynes for limiting the conducting material to the desired areas would be obvious.” Applicant was directed to prepare the application for final action. No response was ever filed to this Office Action. By letter dated November 19, 1946 and received in the Patent Office on December 12, 1946 application was made for priority under Public Law 690 (Boykin Act), from the British Application No. 1749/43 filed February 2, 1943 and two other applications filed in 1943. (It is not clear from the record whether the first British action, in November 1946 had occurred before this letter was sent. It certainly had, before the letter was received by the United States Patent Office. No reference to said British Action, or the therein cited art, appears in the prosecution of the ’960 Patent.) The next Office Action, made on February 11,1947, added as additional references of record Norris 2,166,367 , Wermine 1,718,99s, Arlt 2,066,511 , and Reid 2,268,619 . All claims except Claim 10 were rejected as unpatentable over Norris ’367 “who applies metal foil to glass and then etches out the unwanted metal. To employ a printing plate method of defining the areas to be etched out would be obvious in view of Baynes. The idea of making conductors by applying metal to an insulating backing is old as shown by Ducas, of record, or Arlt, above cited. “Claim 10 is rejected as involving no invention over Arlt in view of Norris and Baynes. Nothing unexpected is aceomplished in applying the metal conductors of Arlt by the etching method shown in Norris in conjunction with the printing plate method of Baynes.” The Examiner then refers to an oral interview of February 6, 1947, the nature of which and the participants therein not being disclosed, at which the references and claims were discussed, and at which applicant agreed “to submit one or two claims similar to Claim 10 but more clearly setting forth the idea of etching the foil to form electric circuit parts in cooperating relationship on opposite sides of the insulating backing * •» Arlt was concerned with “a multiple wiring device for connecting the terminals of electrical apparatus. The device is particularly adaptable for use in connecting the terminals of apparatus of the type mounted in groups on insulating panels.” It specifically was directed to the elimination of point-to-point wiring. Conductive strips were applied to insulating panels by the well-known Schoop spraying process. Mounting holes and terminals were provided. Its adaptability to mass production was expressly claimed. It specifically discloses a plurality of mounting panels superimposed one on the other, each being provided with suitable connecting strips. Terminals are provided for connections to the external circuits. Also, terminals are provided for inductances and condensers on the mounting panel. Wermine and Reid, “cited as of interest” are at least that Wermine relates to wiring electrical panels, and specifically to means for wiring a radio set. It particularly seeks to provide means for wiring such electrical apparatus easily and quickly by unskilled persons; without numerous or expensive tools; and to “enhance the appearance of a connected group of electrical devices by eliminating the usually numerous exposed wires extending in various directions and also by grouping such devices according to a predetermined plan.” A bakelite panel of other pliable semi-cured insulating sheets are suggested. The conductors are of relatively thin strips of electrical conducting material such as copper or brass, with terminal portions. Superposing of three sheets is disclosed, with terminals projecting outwardly for receiving connections with power sources “or other electrical devices.” Switches, condensers, transformers and tubes may be connected to the apertures. Reid is concerned primarily with the construction and method of assembly for a radio receiving apparatus. Standardization and compactness are sought, with replaceable units. Insulation plates between and on which are placed conductive plates and straps having plugs or sockets extending outward to both sides are called for. Stamping out of insulation plates and conductors is recommended. Another personal interview, the nature of and parties to which again are not disclosed, was held on May 15, 1947, as a result of which an amendment was filed dated July 9, 1947, cancelling all claims except Claim 10, which was substantially amended and issued as Claim 1, and adding six new claims which as issued appear as Claims 2 to 7, inclusive. In the Remarks it was said that each “claim brings out the concept of the method of formation of an electrical unit, incorporating spaced complementary circuit paths defined by the non-removed foil layer of a composite sheet” ; the separation out of the remainder of the “foil layer” not imprinted ; and superimposition and connecting the respective conductive designs by conductive means passing through the insulation backing. Imprinting and removing the portion of the foil outside of the design by any means, but not necessarily restricted to etching, is defined. It was conceded that Eisler was not the first to have made a proposed electrical circuit path as a flat surface conductor in the nature of a bus-bar, nor the first to provide a circuit outline by imprinting or coating and subsequent treatment, e. g. electro-deposition. The asserted invention was stated to be: “ * * * Applicant does, however, consider that he is the first to have formed an electrical circuit system involving crossing connections wherein a composite sheet of conductive foil mounted on an insulation backing is treated as by imprinting a design of a particular configuration to provide upon separation of the non-imprinted design as by etching or physical displacement so that there are provided as sub-circuit parts conductive paths following the design imprinted on the foil; so that a series of such sub-circuit parts when superimposed and connected would provide with a minimum of space all of the necessary wiring connections requisite for proper functioning of a radio receiver through the application only of the normally separable parts such as vacuum tubes, etc.” Without further resistance, or explanation of how the references of record had been overcome, the Examiner yielded; the application was formally allowed on September 2, 1947; and the final fee was paid on February 27,1948, with a request for deferment of issuance for the longest period permissible, so that applicant could “avail himself of reasonable time for the safe arrival of corresponding patent applications being filed in foreign countries.” ’697 — This is a division of application Serial No. 11,798, filed February 27, 1948 (the day on which the final fee was paid on the original application, but as to which applicant requested deferment of issuance so that applicant could “avail himself of reasonable time for the safe arrival of corresponding patent applications being filed in foreign countries”) (Emphasis supplied) later Patent No. 2,587,568, itself a division of application Serial No. 520,991, filed February 3, 1944, now Patent No. 2,441,960, issued May 25,1948. The claims relate to two aspects: (1) production of a “component” of electric and magnetic circuit systems, comprising a composite sheet material of an electrically conductive foil backed with a temporary support, printing a representation of the pathway pattern on the foil, removing the portions of the foil not forming a part of the pathway pattern, and placing the pattern on a permanent support; and (2) “printing” a negative resist pattern of the desired pathway pattern upon an insulation backed foil, depositing a “layer” of metal dissimilar to the metal of the foil upon the exposed parts of the foil, removing the representation from the foil, and finally removing by chemical action the foil exposed by the removal. In the first Office Action of July 14, 1952, references were made of record: Eisler (British) 639,111 June 21, 1950 41-Pr. Cir. Eisler (British) 639,178 June 21, 1950 41-Pr. Cir. Eisler (British) 639,179 June 21, 1950 41-Pr. Cir. The claims were rejected on the above British patents, constituting a statutory bar; the Examiner pointing out that the oath was defective in failing to include a reference to these British patents. In response, by communication dated January 6, 1953, applicant modified the original claims by changing conductive “material” to conductive “foil”. The British patents were sought to be distinguished as being simply “applications” and not patents, not having been “sealed” In Office Action of February 6, 1953, the following references were made of record: Miller 1,804,201 May 5, 1931 41/Pr. Cir. O’Connell 2,288,735 July 7, 1942 41/Pr. Cir. Littledale (British) 327,356 April 3, 1930 41/Pr. Cir. All claims were rejected as fully met by each of the references. The Examiner plaintively repeated his position: “The claims are further rejected as unduly multiplied. The several claims are not patentably distinct. For such a relatively simple process two or three claims at most should be ample to cover whatever patentable subject matter may be present.” “O’Connell is cited to show the further state of the art. Note particularly page 2, column 1, lines 62-75. “The rejection on the British patents is held in abeyance.” By letter dated April 28, 1958 and received in the Patent Office on May 6, 1953, applicant requested that the application be placed under Public Law 690 (the Boykin Act) and that the convention dates of the British applications 1749/1943, filed February 2, 1943, and 5379/1943 filed April 3, 1943 be granted. Additional claims were filed, mostly as to transfer methods. After claiming that a number of primary and secondary steps are involved, disclosed and claimed, the “invention” is stated to be: “The concept of the invention which is common to all the claims resides in printing upon an insulation backed metal foil a representation of the desired final conductive pathway pattern and then removing those areas of the foil that do not constitute part of the desired circuit pattern.” The communication refers to the transfer aspects, and seeks to distinguish Littledale, admittedly describing a process of making inductances and transformers from an “insulation backed foil * * * coated with an acid resistant varnish.” The circuit pattern is then traced by means of needles or similar tools, and the metal thus exposed is etched away and then the “varnish covering the remaining parts of the foil is dissolved.” It is also admitted that Littledale mentions that the pattern may be transferred to another backing. The primary distinction claimed is that Eisler’s “method has the advantage that any number of circuit patterns, however involved, can be produced once the printing die has been cut.” Also, Littledale does not mention anywhere the deposition of additional metal upon the foil areas constituting the final pattern. Finally, it is argued that Littledale does not suggest that the foil is backed by conductive metal. Miller, although using the light-sensitive technique, is said not to be “suitable for producing circuit patterns on a mass production basis.” It is also questioned by Eisler if Miller’s use of a metallized powder and deposition is practicable. O’Connell, stated to be concerned with a method of making electrostatic shields, also admittedly uses an insulation backed foil, and suggests the print and etch method, which he describes as inferior to the use of a hot die. O’Connell does not mention the deposition of metal upon the retained areas of the metal foil, or the transfer from a temporary to a permanent support. In Office Action of February 5, 1954, Eisler 2,441,960, May 25, 1948, 41-Print-ed Circuits, was made of record, and in a final rejection, the Examiner stated: “ * * * The claims, namely 1 to 29, are rejected as unpatentable over Miller, O’Connell or Littledale, all of record considered alone or together with Eisler, above cited. Miller discloses the forming of a metal design on a temporary base as by electroplating and then transferring said design to its permanent base. O’Connell employing an acid resist etches a metal foil applied to a flexible base. Littledale produces an electric circuit component on a flexible backing by depositing metal thereon as desired. Additional metal may be applied as desired. Eisler, applicant’s own patent, covers the idea of making a printed circuit from etched designs on a suitable backing material. These claims merely recited the obvious combined features judiciously selected from the prior art as shown by Miller, O’Connell, Littledale and Eisler. Nothing critical is present in the several distinctions argued by applicants. Whether the design is positive or negative is patentably immaterial.” In an answer, dated July 21, 1954, applicant cancelled a number of claims; stated that all the remaining claims recite “foil” as the starting material, and representatively recite that a “negative representation of the pathway pattern to be formed is printed upon the foil”; that metal is deposited in the areas not imprinted; and that foil is removed from the imprinted areas. It is admitted that the individual steps may be found in the references, although it is claimed that these are in different combinations. It is further admitted that “there is no problem to produce and [sic] insulation backed conductive pathway pattern. The unwanted areas of metal foil may be removed by cutting, stamping, etc.; and the pattern may be drawn by hand with a conductive paint on an insulation layer and then be built up by electro-plating * * The use of metal foil is stated to be the solution, assuring a “sound and solid base for the subsequent deposition of strengthening material” and lending itself to transfer operation. Miller again is discounted on the lack of uniformity or conductivity of the powder base. Littledale is recognized as starting with metal foil, but: “This feature as such, is of course, not claimed by the applicant.” O’Connell is recognized as starting with insulation backed foil, and as mentioning the print and etch method, “now generally accepted in the industry.” Eisler ’960 is recognized as starting with insulation clad metal foil, printing a representation and removing the unwanted foil “for instance, by an etching operation.” But electro-deposition results under certain conditions in a more advantageous printed circuit product than is obtained by retaining the original foil. By Office Action dated December 3, 1954, all claims were rejected on the additional reference of “Rubin, 2,443,119, June 8, 1948, 204-18” as a “statutory bar, since applicant failed to copy the claims thereof within one year for purposes of interference. * * * The application of greasy ink and covering with a powdered insulating material are conventional steps in the preparation of printing plates.” By letter dated January 17, 1955, new claims were filed. Rubin was distinguished as not having a filing date making it a statutory bar. Also Rubin recited the use of greasy ink, the use of powdered insulation plastic material, hardening the insulating material and removing the powdered insulating material and the greasy ink. “The use of the aforelisted materials and the aforetested steps are clearly not disclosed by the applicant and cannot be copied by him.” Further, it is contended, Rubin refers broadly to a “predetermined pattern to be reproduced” while all but the last two of applicant’s claims are limited to a “negative representation.” Further, Eisler recites that “the additional metal to be deposited is a metal dissimilar to the metal of the base metal.” The Examiner again completely capitulated and allowed all the claims by Office Action of January 28, 1955. He further held on February 24, 1955 that it was not necessary for applicant to rely upon Public Law 690 (Boykin Act). T65. By application No. 41,267 filed February 25, 1954, Eisler sought to surrender Patent No. 2,587,568, issued February 26, 1952, and to secure a reissue “for the same invention upon the following amended specification.” The amendments consisted in the elimination from the specification in ’960 of references (a) to development of the component by removal of metal; (b) to transfer; and (c) to modification of methods of production by metallization. The original eight claims of '568 were set forth followed by new claims 9-18, all relating to a method of manufacturing a component of an electric circuit of such weak mechanical structure that it is incapable of self-maintenance, the component “including at least one conductor linking at least two terminals of said electric circuit of different operating potentials and including metallic joints for at least one other electric device not contained within said component” comprising metal foil on an impervious insulating backing, printing a representation of the conductive pattern of the component, “including junction points which register with said metallic joints * * ” and “subjecting the metal foil to a chemical action utilizing the differentiation resulting from the imprint to produce a differentiation of conductive and non-conductive parts of the metal foil.” Claims 14-18 relate to “printing” on both sides of metal foil on an impervious backing. As to both the single and double sided applications, claims are made as to “printing”, “printing by means of engraving on a plate”, “printing by means of lithographic stones”, “printing by means of a photomechanical process” and “printing by the off-set method.” The accompanying oath states that Eisler “believes the original patent to be partly inoperative or invalid by reason of your petitioner claiming less than he had a right to claim in the patent.” The alleged insufficiencies and the “errors” are stated in extenso over four pages. It is stated that all the claims in ’568 relate to making electric connections at junctions whereas such steps are usually made by parties other than the manufacturers of printed circuit components; to wit, by the manufacturers of electric equipment. Also, all the claims were directed to “printing a representation”, without setting forth the specific methods of printing; e. g. engraving, lithographic stones, a photo-mechanical process or offset printing. These “errors” are alleged to have arisen because the applicant was not skilled in American Patent law, and so failed to note “that the steps essential for manufacturing the printed circuit component proper which constitute the chief point of novelty of the invention were unnecessarily tied up with a step, to wit, the making of electric connections * * * which might be omitted without detracting from the practicability or patentability of the method according to the invention”. Applicant also failed to note that the claims did not include the various methods of printing set forth in the original specification. The “errors” occurred because the “art of manufacturing printed circuits was a relatively new one” at the time the application was filed. The prosecution was hampered by the fact that the English attorneys had to act through associate attorneys in the United States, not skilled in the printed circuit art; with whom applicant was not able to confer “as frequently as desirable”. Eisler further swore that the errors “occurred through inadvertence, accident and mistake.” Because the patent as issued perpetuated these “errors”, and because of this court’s views on validity, a detailed comparison of the oath with reality is not necessary. The oath was prepared by Eisler’s then American attorney ; was at the best disingenuous, and if necessary for the decision of the case would be found by the court to be dishonest. It was, as most of the patent papers, executed at the very latest possible date, and in substance was repudiated by O’Dell, Eisler’s British Patent Agent; who, however, took no steps to see that it was withdrawn or corrected. Following what had become almost a stereotyped pattern, all claims were rejected by Office Action of April 8, 1954; 1-8 on the ground of double patenting on ’960; the Patent Office having been affirmed by the courts on Serial No. 11,796 “involving this very same question.” Claims 9-18 were rejected on an insufficient oath; and on the further ground that in any event, if there were to be a reissue, it should be of ’960. Claims 9-18 were further rejected on grounds of estoppel, as not patentably distinguishable from the original claims of Serial No. 520,991 [’960].; and as of the same scope as claims cancelled in Serial No. 11,798. O’Connell 2,288,735, and Littledale (British) 327,356 were made of record. The Examiner said: “Claims 9 to 18 are further rejected as fully met by O’Connell. The exact process steps recited are present in O’Connell. As far as the process is concerned, it is patentably immaterial whether the resulting article is an electrostatic shield or an electric circuit. In fact, electric ‘component’ is broad enough to read on the electrostatic shield of the reference. “Claims 9 to 18 are further rejected as involving no invention over Littledale. The printing recited is not critical over the broad application of the resist material of Little-dale. In fact, ‘printing’ is considered broad enough to read on the making of the resist design in any manner such as that of Littledale.” In response, applicant by communication dated October 5, 1954, filed new claims 19-30, essentially the same as claims 9-18, except the new claims referred to at least one conductor “linking at least two terminals of said electric circuit of different operating potentials”. As to double patenting with respect to claims 1-8, it was argued that the said point had been decided in Eisler’s favor in the prosecution of ’568. Applicant argued that all claims in ’960 involve crossing connections between superimposed representations; claims 1— 8 of ’568, and the current application are not concerned with crossing connections or superimposing. Serial No. 11,-798 was stated to have been concerned with three dimension electric and magnetic circuit components in different planes, and with “folding”. As to the oath, it was stated that the printed circuit product was a commercial item without the step of making connections , which step might be made by another. It was asserted that the claims of Applications 520,991 and 11,798 do not contain the limitations in new claims 9-18: (a) “At least one conductor linking at least two terminals of said electric circuit of different operating potentials.” (b) “Metal joints for at least one other electric device not contained within said component.” (c) “Junction points which register with said metallic joints.” These admittedly were inserted in ’568 in an endeavor to distinguish it from O’Connell. Further, it was urged that O’Connell did not show the use of the photomechanical process. As to “printing”, it was urged that as of February 1943, the printed circuit art as now known was not in existence, and at that time “the use of the photo-mechanical process, printing by means gí lithographic stones, etc. was definitely new and inventive in application to printed circuits.” Littledale admittedly “discloses the step by removing unwanted areas of the foil by an etching process” but does not disclose “printing” although: “Printing is defined in the dictionary as the art of reproducing a design upon a surface by any process.” It is argued that the possibility of reproduction is the basic concept of printing, requiring some “bool, die, printing plate, type' or other form of carrier” (emphasis supplied) while Littledale “is in the nature of individual engraving rather than printing. Each product of Littledale is in effect an original, and cannot be duplicated for all practical purposes. Obviously, the method of Littledale is not suitable to make a multitude of printed circuit products which are exactly alike.” (Although it breaks the continuity somewhat, the fallacy of this argument is so significant that the court cannot resist comment. Littledale’s patent claimed “Improvements in and Relating to Electric Inductances and Transformers.” He discloses the use of a sheet of copper foil on a flexible backing, marking out the desired configuration by means of “a needle, cutter, stamp or other scribing or cutting tool” and “etching out the marked portions by means of an acid bath * * * ” (At the Bendix plant, inductances were prepared from copper foil on an insulating backing. In one case, the copper was covered by a photosensitive resist, the print effected by a negative photographic plate, the unexposed surface removed by water, the exposed copper etched away by acid, and then the resist was removed. In the other (Littledale) a resist was deposited; it was cut through by a lathe ((capable of indefinite identical repetitions.)), the exposed copper was etched, and then the resist was removed. When the two end products were being examined, plaintiffs’ counsel understandably inquired “Which is which?”). By.Office Action of October 22, 1954, all claims, 1-30 were rejected on ’960 as double patenting. Claims 9-30 were again rejected on an insufficient oath and estoppel. Claims 9-18 were again rejected on O’Connell, a "component” being broad enough to read on an electrostatic shield. They were also again rejected on Little-dale. Claims 19-30 were rejected as involving no invention over O’Connell or Little-dale in view of Eisler. Both O’Connell and Littledale reveal the making of a circuit component by the resist etching process. “It would be obvious in view of Eisler to make electric connections at junctions of said circuits if desirable since this is taught in Eisler.” The action was stated to be final. In response dated November 22, 1954, the applicant cancelled claims 9-18 and 27. Acknowledgment was made of an interview on November 23, 1954, with the Primary Examiner and the Examiner in Charge. No reference was made to the conferees on behalf of applicant. The added claims were said to specify the term “printing”. It is stated that the two Examiners indicated that the reissue application would be allowable if all claims broader than those originally granted were cancelled. It is further stated that objections to the reissue oath would be withdrawn if the reissue application were limited to claims more specific than the originally granted claims. An “early allowance” was somewhat presumptuously solicited. In Office Action of December 3, 1954, claims 1-8 and 19-26 were said apparently to be allowable. Claims 28-30 were rej ecffed on Rubin 2,443,119, June 8, 1948, 41-Printed Circuit and Lokker et al. 2,506,604, May 9, 1950, 41-Printed Circuit as statutory bars for failure to copy the claims thereof for interference. This Action was supplemented on December 15, 1954, in which Claims 1-8, 19, 20, 22 to 24 and 26 were said apparently to be allowable. Claims 21 and 25 were rejected as not supported by the disclosure, which revealed a printing plate made by the photomechanical process, which plate was later used to print the resist on the foil. Claims 28-30 were again rejected on Rubin and Lokker for failure to copy the claims for interference; and as not supported by the disclosure, since a printed plate, rather than the photographic method, is used. In response of January 19, 1955, claims 21, 25, 28, 29 and 30 were cancelled, and new claims 31-36 were added, calling for the use of a printing plate, variously formed. Reference was made to another conference with the Examiner on