Van Der Horst Corp. of America v. Chromium Corp. of America (197 F.2d 791, 1952)

L. HAND, Circuit Judge.

The opinion of the District Court is reported in 98 F.Supp. 412, and contains a very full statement of the issues involved, the facts found and the supporting evidence; we shall assume an acquaintance with it in what we say, and we do not think it necessary to repeat its substance. Moreover, we shall confine our discussion to only one of the issues decided below, for, even though we should hold with the plaintiff on all other issues, the judgment would have to be affirmed, if, as we believe, the claims in suit are invalid because they are not for any patentable ad-vanee over the prior art. Hence we shall not consider the question with which so much of the argument has been concerned: i. e. how much may an application change its disclosure and still be for the “same invention”? We shall take February 21, 1939 as the date of Van der Horst’s invention, that being the date of filing of his second British “Provisional Specifications”; but we shall ignore the first “Provisional Specifications,” filed September 3, 1938, because these concededly described the invention too indefinitely to identify it with the eventual patent. Before considering the prior art, we should say how we read all but Claim, 4 of the claims in suit. In Claims 6, 22, 26 and 27 the “wearing member” is to contain “small depressions”' whose “bottoms” shall not be smooth: i. e. shall contain “irregularities” or “projections”; and we shall speak of these as the “Valley Claims.” Of them Claim 27 is the only possibly important variant; it prescribes a maximum “pit” depth of “about” .003 of an inch; and since Cleveland’s minimum “pit” depth is .002 of an inch, it overlaps Cleveland; and a patent claim cannot be good in part and bad in part. Claims 9, 13, 23, 24 and 25 are for the surface dimensions