
    (356 F. 2d 541)
    MARCUS HALICZER, D/B/A NOVELTEX PRODUCTS CO v. THE UNITED STATES
    [No. 13-61.
    Decided February 18, 1966]
    
      
      Samuel L. Dmidson, attorney of record, for plaintiff. Donald A. Kaul, Herbert J. Jacobi and Marvin R. Stem, of counsel.
    
      Louise O’Neil, with whom was Assistant Attorney General John W. Douglas, for defendant.
    Before Cowen, Chief Judge, Lakamoee, Dueeee, Davis and Colei Ns, Judges.
    
   Pee Cukiam:

This is a patent suit filed under the provisions of 28 U.S.C. § 1498 for the recovery of reasonable and entire compensation for unlicensed use by the United States of the invention disclosed and claimed in U.S. Letters Patent No. 2,752,916, issued to plaintiff on July 3, 1956, upon application filed October 28,1953, and in U.S. Reissue Patent No. 24,549, issued to plaintiff on October 14,1958, upon application filed June 30,1958. The parties have agreed at pretrial that the issues of validity and infringement of the patents in suit should be first determined and that any accounting issues should be deferred until resolution of the liability issues. Plaintiff is a citizen of the United States, residing in the State of New York, and doing business there as the Noveltex Products Co. Plaintiff was the sole owner of the original patent during its entire life, and he is now, and has 'been at all times, the sole owner of the reissue patent.

The patents in suit disclose a disposable accordion-folded paper face mask of the type used for preventing the spread of respiratory infections. The original patent contained four claims, all of which define a face mask constructed of a single blank of pleated material having scalloped side edges. These four claims are restated exactly in the reissue patent, which contains two additional claims, similar to the first four, but broader in scope and coverage, and devoid of all mention of the feature of scalloped side edges.

The present suit is based upon the alleged use of plaintiff’s invention by the Government in procuring, from various suppliers who were in competition with plaintiff, face masks substantially similar to those illustrated and described in the two patents but not having scalloped side edges. The face masks supplied are charged with infringement of claims 5 and 6 of the reissue patent by reason of the fact that these two claims are directly and literally readable upon the accused devices, and infringement of claims 1 through 4 of the original and reissue patents by reference to the doctrine of equivalents, i.e., that though these claims do not read exactly upon the accused devices, they should be interpreted so as to embrace a reasonable range of equivalent structures.

Defendant has advanced a number of defenses to the charges of infringement, asserting: (1) that the claims of both patents are invalid because they were fully anticipated by the prior art; (2) that claims 5 and 6 of the reissue patent are invalid for the additional reason that they claim elements deliberately abandoned by plaintiff in his application for the original patent; (3) that even if claims 1 through 4 of the original and reissue patents are valid, plaintiff is estopped in light of the file wrapper history to allege that they read upon the accused structures; (4) that even if claims 5 and 6 of the reissue patent are valid, plaintiff has acquiesced in defendant’s purchase of face masks from others, and that this action amounts to an implied license to use and continue to use the allegedly infringing devices; and (5) moreover, that claims 5 and 6 of the reissue patent could not be said to have been infringed in any case, because the face masks upon which these claims are readable were in public use, and on sale, prior to the time plaintiff filed his application for the reissue patent.

On October 28,1953, plaintiff filed his application for the original patent' on the disposable face mask. The drawing which accompanied the application illustrated a single blank of pleated material having scalloped side edges (fig. 5), ah though plaintiff stated in his specifications that alternatively straight side edges could be provided. Eleven claims were originally filed with the application, none of which recited the limitation of scalloped edges, but described merely “a face mask comprising a body folded upon itself to define therein a plurality of superimposed panels spreadable to cover a selected portion of the wearer’s face when opened.” All 11 of these original claims were rejected by the Patent Office examiner as having been anticipated by prior patents, namely: Dehne, 1,526,422, February 17, 1925, disclosing a hat protector; Samuel, 2,172,355, September 12, 1939, disclosing a bandage protector; and Societe, French Patent 860,976, disclosing a head covering. The examiner noted that all the individual features claimed by plaintiff are found in these three prior patents, which demonstrated that it was old: (a) to have accordion-folded pleats; (b) to make the end folds of the structure wider than the others in order to provide a finger hold for unfolding the device; (c) to have tying cords fastened to the ends of the folded body; and (d) to use staples or elastic tying cords.

After the rejection by the Patent Office examiner, plaintiff canceled his original 11 claims and substituted therefor 7 claims which included a recital of “scalloped side edges to impart a transversely curved configuration to the ends of the mask.” Plaintiff stated in his remarks accompanying the revised claims (see finding 10) that the inclusion of this feature of scalloped edges made his device singularly adaptable for a face mask, rather than the hat protector disclosed in the Dehne patent. Three of these revised claims were rejected for lack of invention, but the other four submitted were eventually approved, with minor modifications, and appear now as patent claims 1-4 of Patent 2,752,916, and of Eeissue Patent 24,549.

The application file establishes that the only improvement over the prior art demonstrated to the satisfaction of the Patent Office examiner was the provision for scalloped edges, since the other features described in claims 1 to 4 as allowed were specifically noted by the examiner as having been disclosed by the earlier patents cited. It was on the basis of the inclusion of this feature that the patent was issued to plaintiff on July 3, 1956.

On June 30, 1958, just less than 2 years after issuance of the original patent, plaintiff filed an application for a reissue patent in order to obtain broader coverage for his invention, asserting that through the inadvertence of his attorney, he had in good faith neglected to claim.all the protection to which he was originally entitled. With the reissue application, plaintiff included his original four claims, and in addition filed two new claims which broadened the scope of the original four claims, inter alia, by deleting the specific limitation of scalloped edges. Despite the fact that the examiner had rejected plaintiff’s 11 original application claims which were substantially similar in scope to the 2 new reissue claims and had approved the inclusion of a recital of scalloped side edges, and despite the fact that plaintiff acquiesced in this decision by abandoning the original 11 claims, the examiner now inexplicably approved the 2 new reissue claims, and granted the reissue patent including them, on October 14, 1958.

Plaintiff and others began supplying the Government with disposable paper face masks for use in Public Health Service hospitals as early as 1956. Although the Government discontinued dealing with plaintiff in 1961, it continued to purchase face masks from other suppliers. Plaintiff still makes such masks, supplying them to well-known pharmaceutical companies and hospitals. At no time, however, has defendant either ordered or used masks having scalloped side edges; and, in fact, plaintiff himself has never marketed masks containing this feature. All the masks which defendant has purchased, and which plaintiff and others have manufactured possess straight side edges. The broad language of claims 5 and 6 of plaintiff’s reissue patent is conceded to be directly readable upon the masks purchased by defendant; and claims 1 to 4 of plaintiff’s original and reissue patents would also be readable upon these accused devices if it were not for the specific limitation of scalloped edges which is contained in these claims.

Plaintiff contends that the feature of scalloped side edges is merely a collateral element of design, and not a necessary factor affecting functions, but the Patent Office examiner in fact issued a patent to plaintiff on the specific ground that this feature distinguished his invention over the prior art. Although the correctness of this decision may be open to serious question, the examiner is conceded to possess a certain amount of expertness, and the issuance of a patent is presumptive evidence of its validity. 35 U.S.C. § 282; Williams Mfg. Co. v. United Shoe Mach. Corp., 121 F. 2d 273, 277 (6th Cir. 1941), aff'd, 316 U.S. 364 (1942); Hazeltine Research, Inc. v. Avco Mfg. Corp., 227 F. 2d 137, (7th Cir. 1955), cert. denied, 350 U.S. 987 (1956). We need not decide, however, whether the four claims of the original patent, No. 2,752,916- are actually valid. Even though we assume arguendo that these four claims (and claims 1-4 of the reissue) are valid, plaintiff may not urge that they read upon the face masks purchased by defendant. The Patent Office examiner regarded the element of scalloped side edges as the central feature of plaintiff’s invention, and rejected the application claims which did not include this element. In response to these rejections, plaintiff amended his application by canceling his original broad claims and introducing the limiting element of scalloped side edges into his revised claims. Plaintiff is bound by this limitation which the examiner approved, and he himself asserted, in order to obtain issuance of the patent. Therefore, the scope of claims 1-4 must be limited to include only those devices containing the feature of scalloped side edges, emphasized by the file wrapper as the distinguishing characteristic of plaintiff’s original patent. Alma Motor Co. v. United States, 133 Ct. Cl. 91, 134 F. Supp. 659 (1955).

A patent is normally entitled to embrace a reasonable range of equivalent structures, but it is not entitled to such a range of equivalents as would in effect recapture elements purposely surrendered by the applicant to avoid the prior art. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136 (1942); Straussler v. United States, 154 Ct. Cl. 275, 290 F. 2d 827 (1961). The revised claims, as approved by the Patent Office, must be interpreted with reference to the original claims which had been rejected by the examiner and canceled by the applicant. Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220 (1940); Morpul, Inc. v. Glen Raven Knitting Mill, Inc., 238 F. Supp. 520, 144 U.S.P.Q. 460 (D.C.N.C., Feb. 11, 1965). Plaintiff may not here take a position inconsistent with the one he maintained before the Patent Office in the proceedings which led to the issuance of the patent, and he cannot be heard to assert by reference to the doctrine of equivalents that the broad language previously disclaimed and abandoned may now be restored. Straussler v. United States, supra; Smith v. Magic City Kennel Club, 282 U.S. 784, 790 (1931). Because the face masks supplied to the Government all had straight side edges, and claims 1 to 4 of the original and reissue patents are limited to structures having scalloped side edges, the accused devices do not fall within the scope of interpretation that may be accorded these claims. Consequently, there has been no infringement by defendant of claims 1 through 4 of the original and reissue patents.

Likewise, it is evident that the deliberate cancellation of claims in order to obtain a patent constitutes a bar to obtaining these same claims by inclusion in a reissue patent. Dobson v. Lees, 137 U.S. 258 (1890); Application of Byers, 43 C.C.P.A. (Patents) 803, 230 F. 2d 451 (1956). The 11 claims which were presented during the prosecution of the application for the original patent corresponded very closely in language, and almost exactly in scope, to claims 5 and 6 of the reissue patent. As was noted previously, the Patent Office examiner originally rejected these claims, and in response to this rejection plaintiff conceded the unpatentability of the subject matter claimed therein by specifically canceling all 11 claims, and submitting instead 7 claims' narrower in scope. This deliberate withdrawal or amendment of claims in order to obtain the original patent cannot be said to involve the inadvertence or mistake contemplated by 35 TJ.S.C. §251, and is not an error of the kind which will justify the granting of a reissue patent which includes the matter withdrawn. Dobson v. Lees, supra; Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., 294 U.S. 477, 492 (1935); Application of Byers, supra; Riley v. Broadway-Hale Stores, Inc., 217 F. 2d 530 (9th Cir. 1954). The Supreme Court’s decision in Morey v. Lockwood, 75 U.S. (8 Wall.) 230 (1868), on which plaintiff relies, was quite different. In that case the Patent Office itself had led the inventors into the error by originally insisting "(and wrongly) on the very provision which was later changed in the reissued patent (see id. at 232-233,241). Here, plaintiff himself, not the Patent Office, proffered scalloped edges as the distinguishing feature; the Office did not lead plaintiff into any error.

A reissue patent is not vitiated simply because its claims are broader than those of the original patent; however, particular language which would have defeated the original patent claims cannot subsequently be allowed on reissue. Plaintiff’s acquiescence in the rejection of his original claims, and his acceptance of a patent which contained the limitation of scalloped side edges is evidence of the fact that he elected to cancel his claim to face masks having straight side edges. Therefore, the reissue patent cannot be permitted to enlarge the claims of the original letters patent by including this broad language of claims 5 and 6 which was previously intentionally withdrawn by plaintiff. Dobson v. Lees, supra; Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., supra; Richmond Engineering Co. v. Bowser, Inc., 264 F. 2d 595 (4th Cir. 1959); Application of Byers, supra; Riley v. Broadway-Hale Stores, Inc., supra. The unexplained allowance of claims 5 and 6 of the reissue patent by the Patent Office examiner, in light of the file history of the original patent and the prior art, was manifestly wrong, and these claims must be found to be invalid.

In summary, the court concludes that claims 1 through 4 of U.S. Letters Patent No. 2,752,916 and of U.S. Reissue Patent No. 24,549 have not been infringed by the straight-edged disposable face masks procured or used by defendant. Claims 5 and 6 of U.S. Reissue Patent No. 24,549 are invalid because the cancellation of similar claims in plaintiff’s original patent did not- involve “error” within the meaning of 35 , U.S.C. § 251. Plaintiff is not entitled to recover and his petition must be dismissed.

FINDINGS oe Fact

1. This is a patent suit filed under the provisions of 28 U.S.C. § 1498 for recovery of reasonable and entire compensation for unlicensed use by the United States of the subject matter disclosed and claimed in U.S. Letters Patent No. 2,752,916, issued to plaintiff on July 3,1956, upon application filed October 28,1953, and in U.S. Reissue Patent No. 24,549, issued to plaintiff on October 14, 1958, upon application filed June 30, 1958.

2. Plaintiff is a citizen of the United States and a resident of the State of New York, wherein he maintains an office and does business as the Noveltex Products Co. Plaintiff was the sole owner of the original patent during its entire life, and he is now, and has been at all times, the sole owner of the reissue patent.

3. At pretrial, the parties agreed: (a) to a separation of the issues for trial, (b) that the trial commissioner should make recommendations for conclusions of law, and (o) that the issues of validity and infringement of the patents in suit should be first determined, and that any accounting issues should be deferred until resolution of the liability issues.

4. The original patent in suit, No. 2,752,916, disclosed an accordion-folded paper face mask of the type used for preventing the spread of respiratory infections. Of particular value is the fact that such a mask is characterized by its ready disposability, low cost, and adaptability for being folded into an article of small size. Figs. 1 through 5 of the patent drawings are reproduced herein.

5. The original patent contained four claims, all of which incorporate the language of claim 1, which reads as follows:

A face mask comprising a body formed of a single blank, said blank having scalloped side edges to impart a transversely curved configuration to the ends of the mask, said blank being folded along fold lines across the width of said blank forming accordion pleats, the fold lines being uniformly spaced, with the end folds of greater width than the others to extend beyond the edges of the pleats, and means secured to said body for attaching the mask to the head of a wearer.

The other three original patent claims are dependent on claim 1 and further define the securing means as an elastic band, as extending through the pleats, or as being folded over. Although plaintiff in his petition alleged infringement of all four original patent claims, he has in his requested findings of fact restricted his assertion of infringement to patent claims 1,2 and 3. .

6. The Reissue Patent, No. 24,549,'restates exactly the four patent claims of the original document and contains an additional two patent claims, Nos. 5 and 6, both of which are similar to the first four, but different in the following respects:

(a) The first clause of claim 1 is enlarged in reissue claims 5 and 6 to read as follows: “A disposable face mask comprising a body formed of a single blank of
fibrous material such as porous tissue”; [new recital in italics]
(b) The words of claim 1, “* * * said blank having scalloped side edges to impart a transversely curved configuration to-the ends of the mask,” are deleted in reissue claims 5 and 6;
(c) The third clause of claim 1 is reworded in reissue claims 5 and 6 to read, “said blank being folded along spaced fold lines [across the width] extending in parallel relation between the oposite sides of said blank forming a plurality of accordion pleats”;
(d) The words of the original, “* * * the fold lines being uniformly spaced,” are deleted in reissue claims 5 and 6, and
(e) Claim 5 adds that the accordion pleats thus described shall be “laterally spreadable to cover a selected portion of the wearer’s face when opened.”

Although in his petition plaintiff alleged infringement of both claims 5 and 6 of the reissue patent, he has restricted his assertion of infringement to claim 6 in his requested findings of fact (as well as claims 1 to 3 of the original patent, as restated in the reissue patent). Claim 6 reads as follows:

A disposable face mask comprising a body formed of a single blank of fibrous material such as porous tissue, said blank being folded along spaced fold lines extending in parallel relation between the opposite sides of said blank forming a plurality of accordion pleats having end folds of greater width than the others to extend beyond the edges of the folded pleats, and means secured to said body for attaching the mask to the head of a wearer.

7. Both plaintiff and others have supplied defendant with disposable face masks, having straight edges, on which the terminology of claim 6 of the reissue patent is readable. Such masks were sold to defendant and were in public use at least as early as 1956. None of the face masks, whether supplied to defendant by plaintiff or by others, had scalloped edges (or curved ends), as stated in claims 1 to 4 of the original and reissue patents.

8. The original claims filed by plaintiff in 1953 with his application for Patent No. 2,752,916,11 in number, were not limited to a structure having blanks with scalloped side edges, but described a face mask comprising a body folded upon itself to define therein a plurality of superimposed panels spreadable to cover a selected portion of the wearer’s face when opened. The patent drawing which accompanied the application for patent in 1953 showed scalloped edges. The original application for the patent in 1953 stated that the mask could have either straight edges or scalloped edges. Plaintiff testified at the trial in 1964 that this feature of scalloped edges was of no consequence.

¡9. The original 11 application claims included provisions similar in scope to those of claims 5 and 6 of the Eeissue Patent, No. 24,549, in that they were broad enough to include blanks of material having straight edges and a plurality of parallel accordion pleats laterally spreadable to cover a selected portion of the wearer’s face when opened. All the original claims were rejected by the Patent Office examiner as anticipated by prior patents. Three references were cited as relevant in this respect: Define, 1,526,422, February 17, 1925, disclosing a hat protector; Samuel, 2,172,355, September 12,1939, disclosing a bandage protector; and Socíete, French Pat. 860,976, October 15, 1940, disclosing a head covering. In rej ecting the claims, the Patent Office examiner noted that these three prior patents demonstrated that it was old: (a) to have accordion-folded pleats (original claims 1-3); (b) to make the end folds of the structure wider than the others in order to provide a finger hold for unfolding the device (claims 4~5) ; (c) to have tying cords fastened to the ends of the folded body (claims 6-8 and 10); and (d) to use staples or elastic tying cords (claims 9 and 11).

10. After the rejection, by the .Patent Office examiner, plaintiff canceled his original 11 claims and substituted therefor 7 claims, all of which included a recital of scalloped side edges to impart a transversely curved configuration to the ends of the mask. Plaintiff stated in his remarks accompanying the revised claims that this feature made his device singularly adaptable for- a face mask rather than the hat protector patented by Dehne. Two additional patents were noted by the examiner at this time to establish more fully the state of the.art, both patents showing accordion-folded face masks LaJoie, 2,507,447, May 9,1950, and Burns, 2,634,624, April 14,1953. . Three revised claims rejected for lack of invention recited provisions for packaging in an envelope and for-means to secure-the head binder to the body of the folds, either by stitching or by staples. The other four claims submitted were eventually allowed with minor modifications, and appear now as patent claims 1 to 4 of plaintiff’s Patent 2,752,916 and of Reissue Patent 24,549.

11. The application file of the original patent establishes that the only improvement over the prior art shown to the satisfaction of the Patent Office examiner was the provision for scalloped edges. The other features described in claims 1 to 4 were specifically noted by the examiner at one time or another as having been disclosed by the earlier patents cited. Plaintiff stated in lines 41-50 of column 2 of his patent specification, and still maintains, that alternatively straight side edges could be provided, even though the language of his patent claim defined scalloped edges. The basic argument advanced is that the shape of the edges is merely a collateral feature of design, and not a necessary factor affecting function. Plaintiff’s contention may be valid; but whether or not the feature of scalloped edges is in fact of critical significance, its inclusion in the claim was essential in the eyes of the examiner in order to obtain issuance of the patent.

12. Just less than 2 years after issuance of the original letters patent, plaintiff filed an application for a reissue patent in order to obtain broader coverage, asserting that through the inadvertence of his attorney, he had in good faith neglected to claim all the protection to which he was entitled in the original patent. The reissue application requested five material changes over the original patent claims: (a) inclusion of the feature of disposability; (b) inclusion of a provision that the fold lines extend in parallel relation between the opposite sides of the blank to form a plurality of pleats; (c) inclusion of a provision that these pleats be laterally spreadable to cover a portion of the wearer’s face when opened; (d) deletion of the requirement of uniformly spaced fold lines; and (e) deletion of the requirement of scalloped edges. These changes were approved by the examiner and are incorporated as claims 5 and 6 of the Reissue Patent, No. 24,549.

13. By the action taken and the statements made in connection with the successful prosecution of his application for the original patent, plaintiff had acquiesced in the rejection of claims which were substantially similar in scope to those of claims 5 and 6 of the reissue patent. In order to be able to get a patent at all, plaintiff in effect abandoned his claim to a patent for face masks having straight edges. Claims 5 and 6 of the reissue patent are broad enough in scope to contain matter which previously had been rejected by the examiner in the original application upon reference to prior art and subsequently abandoned by the patentee. They omit the specific limitations which the examiner approved and the plaintiff asserted for the express purpose of obtaining the original patent. There is nothing in the file wrapper of the reissue patent to suggest why claims similar to those disallowed in the original application were later allowed. The unexplained allowance of claims 5 and 6 of the reissue patent by the same Patent Office examiner was manifestly erroneous, and these claims are found to be invalid.

■ 14. In 1955, the Public Health Service attempted to standardize a disposable face mask for use in all its hospital's which could be' supplied, from a central source. The PHS solicited from plaintiff and others information concerning the types of masks which were then available. After studying the various samples that were submitted, plaintiff’s product was chosen, and the specifications standardized, as best suitable for the anticipated use. An initial order for 50,000 masks was negotiated and placed with plaintiff for testing in PHS hospitals. Later, the Government purchased quantities of the masks from plaintiff and other suppliers upon open bidding, and continues to purchase them to the present. The masks procured by the defendant are identical to the masks described in plaintiff’s original patent, except for the fact that they have straight edges rather than scalloped edges. At no time has the Government either ordered or used masks having scalloped edges; and, in fact, plaintiff himself has never marketed masks having scalloped edges.

15. Face masks on which reissue patent claims 5 and 6 are readable were sold to defendant by plaintiff and others, and were in public use, as early as 1956. This was more than 1 year prior to the filing of plaintiff’s reissue application on June 30,1958.

16. The face mask, with straight edges, has met with considerable commercial success. Plaintiff’s business has increased since its introduction, and he alone now sells between four and five million masks per year, outselling his previous models by a margin of about three to one. The accordion-folded mask in question lends itself to comparatively simple mass-production manufacturing techniques, and, as a result, the purchase price of these masks is markedly lower than that of the earlier products. The Government discontinued dealing with plaintiff in 1961, but continues to purchase face masks from other suppliers. Plaintiff still makes the masks with, straight edges, however, supplying them to well-known pharmaceutical companies and hospitals.

17. Claims 5 and 6 of plaintiff’s reissue patent in suit do in fact read directly upon the straight edge masks that were procured by tlie Government, but so would the claims that were rejected and abandoned in plaintiff’s application for his original patent. Since claims 5 and 6 have already been found to be invalid because similar claims had been rejected by the Patent Office and withdrawn in connection with the application for the original patent, there is no liability on the part of the Government.

CONCLUSION OF LAW '

Upon the foregoing findings of fact, which are made a part of the judgment herein, the court concludes as a matter of law that claims 1 to 4 of U.S. Letters Patent No. 2,752,916 and U.S. Reissue Patent No. 24,549 are not infringed, and that claims 5 and 6 of U.S. Reissue Patent No. 24,549 are invalid. Plaintiff is not entitled to recover and his petition is dismissed. 
      
      This opinion incorporates, with minor changes and some added discussion, the opinion prepared, at the direction of the court, by Trial Commissioner Donald E. Lane.
     
      
       Plaintiff contends that the court cannot take account of the arguments' made by his prior attorney to the examiner; for this proposition plaintiff cites a series of cases in the Second Circuit. A. G. Spalding & Bros. v. John Wanamaker, 256 Fed. 530 (2d Cir. 1919); Catalin Corp. v. Catalazuli Mfg. Co., 79 P. 2d 593 (2d Cir. 1935) ; Katz v. Horni Signal Mfg. Corp., 145 P. 2d 961 (2d Cir. 1944), cert. denied, 324 U.S. 882 (1945) ; Van Her Horst Corp. v. Chromium Corp., 98 P. Supp. 412 (S.D.N.Y. 1951) ; Zenith Radio Corp. v. Lehman, 121 F. Supp. 69, 73 (S.D.N.Y. 1954), aff’d 217 P. 2d 954 (1955). As we understand the Second Circuit position, it does not preclude a court from considering such arguments of a patent-claimant with relation to the issue of estoppel involved here, i.e. in determining whether the claimant deliberately gave up certain claims rejected by the examiner in order to induce the latter to issue a patent. See Westinghouse Electric Co. v. Condit Elec. Mfg. Co., 194 Fed. 427, 430 (2d Cir. 1911) ; Auto Pneumatic Action Co. v. Kindler & Collins, 247 Fed. 323, 328 (2d Cir. 1917) ; A. G. Spalding & Bros. v. John Wanamaker, supra, at 533; Catalin Corp. v. Catalazuli Mfg. Co., at 594; Katz v. Horni Signal Mfg. Co., supra, at 963; Van Der Horst Corp. v. Chromium Corp., supra, at 420.
     
      
       “Claim 12 (claim 1 now) defines the scalloped edges of the blank, which makes the device adapted for a face mask, rather than the head cover of Dehne. Naturally, using her device for the head, Dehne does not provide for a transverse curve.”
     