The opinion of the court was delivered by: GALSTON
This is a patent infringement suit in which infringement is alleged of letters patent No. 1,467,614, granted September 11, 1923, to Charles W. Eads, for a finger nail cleaning compound; and of patent No. 1,819,004, granted August 18, 1931, to Walter C. Roessinger, for an invention of a toilet article, which, in the course of the trial, was referred to as a "manicure pencil."
The specification of the Eads patent states that the invention relates to a cleansing and bleaching compound adapted to be used for removing accumulations on finger nails and bleaching the finger nails. This compound is shaped as a shaft, and consists of a bleaching element, an abrasive substance, and a binder, and of the consistency of a semisolid.
The inventor states that in forming his compound he has found that any number of binders such as paper pulp, clay, wax, tallow, soap or the like may be used, mixed with predetermined proportions of a bleaching element, such as any of the alkaline salts or acids or ammonia, peroxide of hydrogen, or listerine, to which there is added an abrasive or cutting substance such as chalk, pumice, or whiting. The specification states: "It is to be understood that suitable quantities of the named elements or any parts or combinations thereof would be mixed in a desired proportion and permitted to set or attain the consistency of a semi-solid (the nature of which would be akin to a colored crayon)."
To facilitate the use of the compound and to prevent it from breaking and to facilitate its handling, a casing is provided so that the article may be carried much in the same way as a pencil or pen.
Claims 1 and 5 are in issue, and they read:
"1. A finger nail cleaner comprising a cleansing compound shaped as a shaft in combination with means for containing said shaft."
"5. A finger nail cleaner comprising a semi-solid cleansing compound shaped as a shaft and capable of removing accumulations from beneath finger nails in combination with means for containing said shaft."
On June 6, 1934, after this action was pending, but before it was reached for trial, the plaintiff filed a disclaimer in the Patent Office as to these claims, stating that it disclaimed from the scope thereof any shaft, save one, which has a substantially white color and which includes a water soluble binder. It will be noted that this disclaimer was filed eleven years after the patent issued; and the alleged ground on which the disclaimer is based is, "that it has reason to believe that through inadvertence, and without fraudulent and deceptive intention, the specification and claims of said letters patent are too broad, including that of which said patentee, Charles W. Eads, was not the first inventor."
The defendants contend that the disclaimer put new matter into the claims; that the new matter is implicit to the disclosure of prior art patents; that there is no showing of inadvertence, accident, or mistake; and there is no explanation of the long delay.
I think the testimony of Professor Masson makes it reasonably clear that the disclaimer does not inject new matter. He stated that for all practical purposes the binders suggested by Eads were water soluble; also that white was the natural and unavoidable color of the compound. The effect of the disclaimer was to narrow the scope of the claims; and the witness shows that the necessary implication of the specification justified the limitation added to the claims.
There is a showing of inadvertence made in the history of the proceedings as set forth above. The Eads was a paper patent that was acquired by the plaintiff only as a matter of expediency, and there was no reason for seeking a correction until this suit was instituted. The record does not indicate either that the defendants were in any degree prejudiced by the delay. Thus no question arises of intervening rights, or of estoppel or bar.
I proceed then to the validity of the patent and the matter of infringement.
The defendant, Swan Pencil Company, Inc., contests infringement on the ground that the defendant's crayon does not contain an effective abrasive nor any bleach; also that it cannot be called a semisolid, and that ...