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Schillinger y. Gunther.

considered as part of the original specification to the extent of the interest possessed by the claimant, and by those claiming under him, after the record thereof. But no such disclaimer shall affect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing it.” By section 4,922 it is provided as follows:“Whenever, through inadvertence, accident or mistake, and without any wilful default or intent to defraud or mislead the public, a patentee has, in his specification, claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the original and first inventor or discoverer, every such patentee, his executors, administrators and assigns, whether of the whole or any sectional interest in the patent, may maintain a suit at law or in equity, for the infringement of any part thereof which was bona fide his own, if it is a material and substantial part of the thing patented, and definitely distinguishable from the parts claimed without right, notwithstanding the specifications may embrace more than that of which the patentee was the first inventor or discoverer. But, in every such case in which a judgment or decree shall be rendered for the plaintiff, no costs shall be recovered, unless the proper disclaimer has been entered at the Patent Office before the commencement of the suit. But no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer.” The purport of these two sections, taken together, is, that, where a proper disclaimer is entered during the pendency of a suit on a patent, there may be a recovery for the plaintiff, in the suit, in respect of what is not disclaimed, provided there has been no unreasonable neglect or delay to enter a disclaimer, but the recovery is to be without costs. In the present case a proper disclaimer was entered after the suit was commenced. It disclaims certain words in the body of the specification, and it also disclaims a part of what was claimed in the first claim of the re-issued patent. What is disclaimed in the body is the foundation of so much of the first claim as is disclaimed. The plaintiff was neither the original nor the first inventor


Schillinger v. Gunther.


of so much of the first claim as is disclaimed. What is thus disclaimed is a material and substantial part of what is covered by the first claim. The part of such claim which is not disclaimed is truly and bona fide the plaintiff's. What is not disclaimed is definitely distinguishable from what he claimed without right. He did not choose to claim or to hold by virtue of the re-issued patent wha the disclaimed. What he disclaimed was inserted by the re-issue. It did not exist in the original patent. But, for the purposes of a disclaimer, what is disclaimed stood, before it was disclaimed, as if there never had been but one patent, and that the re-issued patent. It was proper to correct, by a disclaimer, the unlawful claim introduced by the re-issue. It is true, that, strictly, $ 4,917 contemplates only a disclaimer of some claim, or part of a claim, but, in connection with a disclaimer of a claim, or of a part of a claim, it is not improper to eliminate or withdraw, by the same writing, the parts of the body of the specification on which the disclaimed claim, or part of a claim, is founded. The disclaimer is none the less a disclaimer of a claim or of a part of a claim because, in addition, it disclaims such parts of the body of the specification. The disclaimer being a proper

a one, in form and substance, it is, by the statute, to be, after its filing, “ considered as part of the original specification.” The re-issued specification is to be thereafter read as if the disclaimer were incorporated in it.

But, no disclaimer can be allowed to be operative, unless the unlawful claim was made through inadvertence, accident or mistake, and without any fraudulent or deceptive intention, nor can a plaintiff recover on a patent which claims anything not bona fide the patentee's, unless the claim to the thing not bona fide his was made through inadvertence, accident or mistake, and without any wilful default or intent to defraud or mislead the public. It is set up in the amended answer, that the part of the thing patented which is disclaimed by the disclaimer, was not introduced into the reissued patent “through inadvertence, accident or mistake, and without any wilful default or intent to defraud or mis- .


Schillinger v. Gunther.

lead the public, but, on the contrary, was introduced into it “deliberately and with the intent to defraud or mislead the public.” I have arrived at the conclusion, on the evidence, that the disclaimed parts, both of the body of the re-issued specification, and of the first claim thereof, were introduced by reason of a mistaken idea on the part of the plaintiff, that the concrete, in setting, would shrink, so that the second block, when set, would not, though setting in contact with the first set block, adhere to such first set block, and that it was not necessary, in forming the blocks from the plastic material, to interpose anything between their joints, in the process of formation, in order to produce the detached blocks or sections described in the specification. I am also of opinion, on the evidence, that there was no wilful default, or fraudulent or deceptive intention, or intent to defraud or mislead the public, on the part of the plaintiff. The evidence shows, that the plaintiff believed, when he took the re-issue, that a sectional pavement could be made of plastic concrete, without interposing anything between the blocks. He may not have experimented as much as he ought to have done before arriving at that conclusion. He may have arrived at it on insufficient and inadequate grounds. Still, if he acted in good faith, it was a mistake. If he made experiments and drew a conclusion from them, not wholly baseless, it was not a wil. ful default, although other persons may, from other information, have been of a different opinion, and although other persons would have been slow to draw the same conclusion the plaintiff did from the premises before him. So, too, although the experiments and the conclusion were made and arrived at after the original patent was taken out, in such wise as to destroy the validity of the re-issue so far as such conclusion was concerned, it was proper to make the disclaimer in question, in order to avoid the effect of inserting in the re-issue matter which amounted, if true, to an invention made after the granting of the original patent. The plaintiff states, in his affidavit made November 22d, 1878, that he has never known any cement pavement constructed in sections

Schillinger v. Gunther.

formed on the ground for actual use in outdoor work, without the interposition of something while the material was in a plastic state, to form or complete the joints. There is nothing in this that is inconsistent with his statement in the same affidavit, that he believed, when he took his re-issue, that the concrete, in setting, would shrink, and that, after one section had been formed, another section might be formed of the plastic material directly against and in contact with the one already formed, and the blocks, when completed, would be detached; nor anything inconsistent with the fair result of the evidence. The experiments on which he rested his belief were not pavements in sections formed on the ground for actual use in outdoor work. As to the conversations with the plaintiff, testified to by witnesses, they are too vague

and unreliable to be satisfactory. The fact that the plaintiff, in the fall of 1874, laid, in Washington, from 2,000 to 3,000 square feet of concrete pavement in sections, without any. thing being interposed between the blocks, with the intention that it should be a pavement of detached blocks, such as his specification describes, shows that he had not, at that time, abandoned the idea that a pavement of detached blocks could be made in that way. It was not till January, 1875, that it clearly appeared that such pavement was a pavement of adhering blocks and not a pavement of detached blocks.

The foregoing observations serve to show that there was no unreasonable neglect or delay in not filing until March 1st, 1875, the disclaimer in question.

The remaining defence set up in the amended answer is founded on the first subdivision of $ 4,920 of the Revised Statutes, and is to the effect, that, for the purpose of deceiving the public, the description and specification filed by the patentee in the Patent Office, and which is contained in the re-issued patent, was made to contain less than the whole truth relative to his alleged invention or discovery, or more than is necessary to produce the desired effect, and that the patent is, therefore, void. This defence fails, because, as has been held, there was no purpose of deceiving the public; and,

In re Harvey Morse, an alleged Bankrupt.

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also, because the disclaimer being now a part of the specification, the specification is not open to the alleged objection.

The defences set up are overruled as not sustained by the evidence, and a decree to that effect will be entered.


Edward Fitch and John Van Santvoord, for the plaintiff.

Arthur V. Briesen, for the defendant.


An amended petition in involuntary bankruptcy cannot set forth, as part of the

indebtedness to the petitioning creditor, a promissory note, endorsed by

the debtor, which did not fall due until after the original petition was filed. The District Court overruled a demurrer to an amended petition in involuntary

bankruptcy, without prejudice to an application for leave to answer, on show. ing satisfactory cause therefor. Such application was promptly made, with the proposed answer duly verified, alleging defences which the debtor was entitled to try and prove, but the application was refused : Held, that, in analogy to the practice laid down in Rule 34 in equity, it ought to have been granted.

(Before BLATCHFORD, J., Northern District of New York, August 28th, 1879.)

BLATCHFORD, J. This is a petition praying for the review and reversal of an order made by the District Court, March 11th, 1879, overruling a demurrer to an amended creditors' petition in bankruptcy, and ordering an adjudication in bankruptcy, and a reference of the case to a register. The original creditors' petition was filed by a single creditor, the Farmers' Bank of Fayetteville, August 9th, 1878. On the 5th of March, 1879, the District Court made an order dismissing said original petition, with costs, unless an amended petition should be filed, within ten days from that date, by the said

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