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July 21, 1950


The opinion of the court was delivered by: BONDY

This action is for infringement of Patents No. 2,213,113, issued August 27, 1940, and No. 2,244,591, issued June 3, 1941. Both patents relate to the testing of prophylactic articles of thin rubber.

Patent No. 2,244,591 was applied for March 30, 1939 and included the disclosure of both patents in suit. Patent No. 2,213,113 was applied for October 10, 1939, as a divisional application and was taken from its parent.

 In the manufacture and sale of these prophylactic articles it is essential that they be as free as possible from holes or other imperfections. Therefore, testing them for such imperfections is of the utmost importance.

 Prior to the two patents in suit, such articles were tested by inflating them with air and observing in various ways whether air escaped from them. The so-called Air Inflation and Facial Exploration Test involved placing the rim of the article over a compressed air nozzle, inflating the article with air, and then manipulating it by forcing the air from end to end while holding the article against one's neck to determine whether air was leaking through any minute hole in the article. This required skill and vigilance on the part of an inspector. The test accordingly was subject to human error. Moreover, the cost of such testing was extremely high, exceeding the cost of producing the articles. Attempts had been made to perfect an automatic mechanism for air testing in order to reduce the manual labor and high cost of the existing methods, but without satisfactory results. Air inflation tests were practiced by plaintiff and others for about 15 years before the advent of the methods disclosed by the two patents in suit.

 Patent No. 2,213,113 set forth an entirely different testing method. By this new test the rubber article was stretched over a rigid metal cylindrical form, which was then dipped into a tank containing tap water, the surface tension of which was reduced to a desired extent either by heating the water or by adding a wetting agent, such as aerosol. As stated by the patentee in his specification: ' * * * should any article be imperfect, the liquid will pass or seep through the most minute hole or aperture in the article and spread out over the inner surface thereof between said article and its supporting mandrel and around such hole or perforation, thus producing a comparatively darker spot or area * * * , which is readily perceptible to the eye, and enabling an observer or inspector to discard that particular article because defective.'

 In carrying out this principle the patentee showed apparatus for mounting the mandrels or forms on an endless chain conveyor, the forms extending laterally from the conveyor so that they pass through a complete cycle in one complete traverse of the conveyor. Operators at a loading station mount an article on each form as it passes by; the forms then dip through and pass the length of the bath; tilt over the edge of the tank thereby returning to a horizontal position; and then pass to a visual inspection station where an inspector removes from the forms those articles which show dark areas resulting from the presence of a hole.

 The evidence as shown by tests disclosed that the dark area thus formed was noticeable in the bath, after removal from the bath, and even remained visible after the outside surface of the rubber article had dried, the film of water around the hole in the article being retained between the article and the form over which it was stretched.

 Thus, instead of expelling air from the inside of the article with consequent slow escape through a hole therein, as practiced by the air inflation test, by this new method the article was plugged with a solid form so that neither air nor water could possibly pass from the inside to the outside of the article; and if there was a hole in the article, the testing was of a visible dark area developing between the form and the article. The invention accomplished a new instrumentality for a new test.

 As disclosed by the evidence, the advantages of this visual test over the prior air inflation test were the reliable, automatic, instant and satisfactory exploration of the entire effective area of the article while in the bath, and even out of the bath, revealing the dark area by the time the article had reached the inspection stage. The chance of error was reduced to a minimum, and the cost of inspection over prior methods and practices was considerably reduced.

 Plaintiff, the patentee's assignee, promptly utilized the new method in its business, and has continued to do so from 1940 to date with considerable success.

 Neither the Patent Office nor the defendant has cited any prior patents, publications or public uses anticipating the invention. Though the test may now appear simple, simplicity does not negative invention. See Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279, 64 S. Ct. 593, 88 L. Ed. 721; Kurtz v. Belle Hat Lining Co., 2 Cir., 280 F. 277, 281.

 The joint application filed by Youngs and Ballentine on March 30, 1939 included: (1) 'dark spot' method claims; (2) 'dark spot' apparatus claims; and (3) claims relating to electrical means. The Patent Office required a division of this joint application into three applications, one for each of the above types of claims. In compliance with this requirement the joint 'dark spot' method and apparatus claims were cancelled on October 6, 1939, leaving intact in the joint application only those claims relating to electrical means. Thereafter, on October 10, 1939, Youngs, one of the joint inventors, filed a sole application claiming only the 'dark spot' method claims. It was this sole application that resulted in the issue of Patent No. 2,213,113.

 Defendant contends that the patent is invalid because it has not been satisfactorily established that Youngs was in fact the sole inventor of the method claims and, in any event, because the parent Youngs-Ballentine application is prior art. It also contends that since the 'dark spot' apparatus claims of the joint application were not claimed either by the joint inventors or by Youngs alone, they were abandoned and hence defendant may freely use the apparatus.

 Although the parent application was joint, the court is of the opinion that it was proper to file the divisional application as a sole application if the applicant was in fact the sole inventor of the invention claimed therein. Youngs filed an oath to that effect as required by 35 U.S.C.A. § 35. Cf. Rule 45(b) of the Rules of Practice of the United States Patent Office, 35 U.S.C.A. Appendix, following Section 114, effective March 1, 1949. Moreover, it was stipulated that if the patent attorney for Youngs and Ballantine were called as a witness he would testify that both inventors had informed him that Youngs was the sole inventor of the visual test method and that he (the patent attorney) drafted the divisional application accordingly. ...

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