Here is the last part of the opinion. Sorry for the long post, but I thought Dr. B, our new member, wanted to see this.
The Hunt hull was new and novel in form and produced new and useful results by superior performance as heretofore described.
PRIOR USE AND SALE
Defendant contends that the patented hull was in public use and on sale more than one year prior to August 24, 1959, the date of the filing of the patent application, and thus the patent is invalid under 102(b) of the statute.
The evidence shows that in April, 1958, George D. O'Day Associates, Inc., announced to the public a new hull design as disclosed in Claim 4 of the subject patent and offered to supply boats in the future not yet built; however, there was no showing that the completed hull was in the hands of O'Day at the time of the public sale offer. ‘An offer to sell is a bid for customers but is not a sale.’ Trabon Engineering Corp. v. Dirkes, 6 Cir. 1943, 136 F.2d 24. This offer was under an agreement between O'Day and Charles R. Hunt, which had been entered into about March 31, 1958, though the details of the agreement are not shown. The two wood and two fiberglass prototypes as earlier described were shown to be experimental models and were actually used in an experiment program well beyond the critical August 24, 1958, date.
Thereafter a third fiberglass hull was molded and the first sale by O'Day was made on December 29, 1958. At the time O'Day offered the hull to the public for sale only the wood prototypes had been built. Therefore, this activity fails to show commercial manufacture of the Hunt hull in its completed form prior to August 24, 1958.
[10] The Aqua Hunter advertisement, portraying the patented hull, which appeared in Popular Boating (Plaintiff's Exhibit 18), recites that it was made in Canada for O'Day Associates.*1150 It was not shown whether the O'Day offer of sale was in this country or in Canada, and the same lack of proof occurs with reference to O'Day's first sale on December 29, 1958. This deficiency is fatal to the use and on sale requirements of Title 35 U.S.C. 102(b).
Gandy v. Main Belting Co., 1892, 143 U.S. 587, 12 S.Ct. 598, 36 L.Ed. 272. ‘Public use or sale was limited to a use or sale in this country.’
The continuous testing and experimenting conducted by the inventor was made necessary because of the revolutionary nature of the hull and the application of the design to boats of varying sizes and types. After August 24, 1958, three major problems had not been solved; (1) the wetness of the boat interior under way, (2) the difficulty of steering control of the 23 foot single engine outboard at low speed, and (3) inability to use the 16 foot outboard model for water skiing, etc., owing to the weight of the water in the tunnel. As stated in Watson v. Allen, 1958, 103 U.S.App.D.C.5, 254 F.2d 342, 346:
* * * the law also recognizes that the inventor may wish to perfect his idea before applying for patent, and indeed, it is in the public interest that he do so. Hence, facts which may well be fatal to patentability after experimentation are frequently excused if they occurred during experimentation.
[11] The date of invention is fixed when the inventor's ideas are reduced to practice. Consolidated Vultee Aircraft Corp. v. Maurice A. Garbell, Inc., 9 Cir. 1953, 204 F.2d 946, cert. denied 346 U.S. 873, 74 S.Ct. 122, 98 L.Ed. 381. To establish a reduction to practice of the inventor's idea, there must be a demonstration that the inventor's idea works; that the invention will perform in a manner which will accomplish its intended purpose. RCA v. International Standard Elec. Corp., 3 Cir. 1956, 232 F.2d 726. And there may be an experimental use even following reduction to practice where the experiments are part of an attempt to further refine the device. Atlas v. Eastern Air Lines, Inc., 1 Cir. 1962, 311 F.2d 156.
[12] Defendant failed to prove by clear and convincing evidence that the Hunt hull had been on sale in the United States more than one year prior to the filing of the application for patent. Any public use of the hull more than one year prior to filing of the application for patent was solely for experimental purposes.
DELAYED CLAIMING
Defendant contends that the hull described in Claim 4 of the patent was not disclosed by the original application for patent but represents the introduction by amendment of new matter into the disclosure of the invention as prohibited by Title 35 U.S.C. 132. This contention is apparently based in the main on the fact that the amendments which later became Claim 4, and were introduced about two years after the original application, did not include the water ballast tunnel.
This theory of delayed claiming is enunciated in the case of Muncie Gear Works, Inc. v. Outboard Marine & Mfg. Co., 1942, 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171. That case holds that the original application wholly failed to disclose the invention which the amended claims disclosed and that consequently the amendment should be treated as a new application. Thus the statutory period of prior public use, which bars patentability, should be determined from the date of the filing of such amendment rather than from that of the original application.
[13] However, it is clear that claims can be added or amended and still retain the benefit of the one year period of prior public use dating from the original application, as long as the original application adequately discloses the invention finally claimed. Diamond International Corp. v. Walterhoefer & Sons, D.C.Md.1968, 289 F.Supp. 550. Or as held in *1151 Illinois Tool Works, Inc. v. Continental Can Co., Inc., 7 Cir. 1968, 397 F.2d 517, in distinguishing the Muncie Gear case, the later claim, while not claimed originally was ‘readily apparent’ in the original application.
Helpful in considering this matter is the following from Technicon Instruments Corp. v. Coleman Instruments, Inc., D.C., 255 F.Supp. 630:
By disclosing in a patent application a device that inherently performs a function, operates according to a theory, or has an advantage, a patent applicant necessarily discloses that function, theory, or advantage even though he says nothing concerning it. The application may later be amended to recite the function, theory, or advantage without introducing prohibited new matter. In any event, the fact that the Patent Office allows such an amendment without objection thereto as new matter (within the meaning of Title 35, U.S.C. 132) is entitled to an especially weightly presumption of correctness.
[14] It is apparent that elimination of the water ballast tunnel only narrows the scope of the original disclosure and did not introduce a new subject matter into the application. The variation of the hull without the tunnel was obvious and inherent in the original application. Consider the following from the opening paragraphs of the file wrapper history (Defendant's Exhibit 9):
This invention relates to boat construction and more particularly to a novel, high speed planing hull especially useful as an outboard motor driven hull for rough water operation. The main object of the invention is to provide a boat hull which has inherent stability enabling it to be operated as a planing hull in rough water conditions, even with large variations in boat load. At the same time, the invention provides a hull which may be automatically ballasted for low speed operation, yet remain a light weight hull in high speed operation, as is essential in a planing hull, as well as one of simple and economical construction.
Defendant failed in its heavy burden of proof to produce evidence sufficient to warrant setting aside the ‘especially weighty presumption of correctness' in the Patent Office's allowance of the amended Claim 4.
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