L. HAND, Circuit Judge (after stating the facts as above).
The general attack upon the invention we answered in our earlier opinion, and we need add nothing to what we there said, except in so far as Meinzer's patent may be thought to affect the result. It is quite plain that Mainzer had no such notion as Calkins. It is quite true that he disclosed brass strips, in some instances sunk into the concrete, to mark out the pattern of the mosaic, and that he spoke of lugs and notches in the strip to prevent it from working loose. So far as his drawings disclose, these lugs and notches are either in the concrete or in the terrazzo, never at the juncture of the two. In any event, there is no suggestion that "ears" shall be struck out from the strips to serve as stops for the descent of the strip as it is pushed into the concrete. Indeed, some of the figures show flanges actually buried in the concrete itself, which presupposes their placement before the concrete bed is finished. We think that the District Judge was quite right in ignoring such a reference, even upon motion for a preliminary injunction.
Calkins' earlier patent was not part of the prior art, and it is not necessary to the validity of the claims in suit that they should embody a patentable advance over the earlier disclosure. The two applications were copending, and it is a matter of indifference which of the patents issued first, provided that the claims are for separate inventions. This was held after elaborate discussion in Miller v. Eagle Mfg. Co., 151 U.S. 186, 14 S.Ct. 310, 38 L. Ed. 121, and had been already decided in Suffolk Co. v. Hayden, 3 Wall. 315.
Milburn Co. v. Davis, etc., Co., 270 U.S. 390, 46 S.Ct. 324, 70 L. Ed. 651, was concerned with quite another issue, that of the priority of invention between separate inventors. It held that upon that issue the disclosure, not the claims, of an unissued application was what mattered, and that applications should be treated like issued patents. It did not, because it could not, lay down any rule respecting abandonment, or what was the effect upon the rights of an inventor of allowing one of several applications to go to issue. Whatever may appear to the contrary in National, etc., Co. v. Automatic, etc., Corp., 15 F.2d 257 (C. C. A. 2), must be understood as not necessary to the decision of that case.
Therefore all we have to do in the case at bar is to decide whether the claims in suit are for a separate invention from the original claims allowed upon the first application. Clearly the test of this question is not whether the step between the later claims and the earlier required invention. The whole discussion in the books presupposes that the disclosure would be fatal to the new claims, if it were a part of the prior art, and upon the issue of invention the disclosure, not the claims, is relevant. Where the earlier claims are for one feature of the disclosure and the later for another, no difficulty can arise; but where the earlier claims are generic and the later specific, or vice versa, the matter is not so plain. We shall for argument assume that the original claims of the first patent need not have been strictly limited to the disclosure, and, if so, they covered both continuous and discontinuous lower edges. Nevertheless the continuous edge was not originally shown, and the claims in suit added it as a new feature, designed to effect a result which would not follow upon the practice of the first disclosure, except in case it had been deliberately varied. It is familiar law that a species claim may be a good invention, notwithstanding that the genus is already in the public demesne, which implies that it is a separate invention, and the case at bar is as much an instance of that situation as though the distinction between the old and new claims were patentable. The point was raised and discussed in Thomson-Houston Co. v. Ohio Brass Co., supra, in a case where the generic patent issued last, a much more serious situation for the patentee.
Next, as to the claim of abandonment. It is quite true that the patentee, timid after his initial defeat, abandoned all his original claims in the first patent. At that time he had procured the patent in suit, which had secured to him a part — perhaps, indeed, the whole — of that which he so abandoned. The logic of his position therefore necessarily involved the invalidity of the second patent. Indeed, he gave as his only reason for the reissue that the continuous edge was old in the art, and that his invention, to be valid at all, must be limited to slits running to the bottom. If, therefore, his belief as to the validity of the claims in suit, and his action upon it in that application, be relevant, the case would end. However, while abandonment is a question of intent, it is not a question of opinion. A patentee may say to twenty people that he thinks his patent void, and it will not affect his rights a particle. He must do something which expresses a purpose to dedicate his disclosure to the public. It is quite true that, so far as the earlier patent was concerned, he abandoned all the disclosure but what the reissued claims covered. No doubt, had he supposed it necessary, he would have also abandoned the claims in suit; but he did not. His action was limited to the patent which he was dealing with, and his intent must be so limited as well.
If the point is a good one at all, it must therefore be, not because he intended to abandon his later claims, but because the inconsistency of his position upon the reissue and on this suit is fatal to his case. Mere inconsistency is nothing, if no one be prejudiced. Here there can be no public prejudice, unless it was necessary to obtain the reissued claims, not only to abandon the original claims in that patent, but all claims elsewhere which covered the same matter. We can see no reason for such a conclusion. He might reduce his original claims as he pleased; the consideration for them remained only so much of the disclosure as they covered. As for the rest, it was not necessary for their support, and was, as it were, a mere gratuity to the public. And so we can see no reason to force
The last question is of double patenting, as to which it might be enough to say that it is not pleaded. However, as the question is likely to arise later, and its answer is really involved in what we have already said, we will not leave it open. The defense is good only when the claims are the same, and the discussion in Miller v. Eagle Mfg. Co., supra, was really of this point. As we have held that the original claims and the claims in suit are not the same, the defense fails. It is, indeed, quite true that Calkins gets a protection for more than 17 years for the continuous edged strip. He got it during the existence of the original generic claims, and he gets it from the claims in suit. Yet it is never an objection to an improvement patent that an earlier generic patent has covered the same structure, and each is valid, though taken out by a single inventor. O'Reilly v. Morse, 15 How. 62, 122, 133, 134, 14 L. Ed. 601. This is precisely the same situation, except that, because the applications were copending, it is not necessary that the improvement should be an invention over the matters disclosed in the other application. In view of the fact that the date of issue of an application is beyond the control of the applicant, the chance of so extending the monopoly is disregarded, and it makes no difference which of the applications issues first. Thomson-Houston Co. v. Ohio Brass Co. (C. C. A.) 80 F. 712, 726, 727.