Laches in applying for a re-issue is fatal to the re-issue and may be taken advantage of by a demurrer ; Philadelphia Novelty Mfg. Co. v. Rouss, 39 Fed. 273. What is reason able a question for the court and the decision of the patent office on•that point is not conclusive; Hoskin v. Fisher,' 125 U. S. 217, 8 Sup. Ct. 834, 31 L. Ed. 759. The plaintiff must explain the delay in applying for a re-issue; Hoskin v. Fisher, 125 U. S. 217, 8 Sup. Ct. 834, 31 L. Ed. 759. The in advertence must be in reference to the ap plication and not to the invention. See a review of the cases in Parker & W. Co. v. Clock Co., 123 U. S. 89, 8 Sup. Ct. 38, 31 L. Ed. 100. A delay of three years is held to invalidate a re-issue; Mast, Foos & Co. v. Pump Co., 76 Fed. 816, 22 C. C. A. 686; so of more than five years, unexcused; United Blue-Flame 0. S. Co. v. Glazier, 119 Fed. 157, 55 C. C. A. g53; but not of seven and a half months ; A. D. Howe Mach. Co. v. Motor Washer Co., 197 Fed. 541, 117 C. C. A.
37; nor a year ; Trethaway v. W. B. Bertels & Son Co., 180 Fed. 730, 104 C. C. A. 96; but where a patent, dated in 1882, was held void in 1894 and a re-issue was granted five months later, it was held valid; Maitland v. Mfg. Co., 86 Fed. 124, 29 C. C. A. 607; and a delay of twelve years, patent has been acquiesced in for ten years by the trade ; Steiner & V. Hardware Co. v. Sash Co., 178 Fed. 831; but where a patent had been declared void, the patentee cannot con tinue to litigate on it for years and then apply for a re-issue ; Thomson-Houston Elec tric Co. v. Electric Co., 158 Fed. 813, 86 C. C. A. 73; where, on an application for a re issue, the primary examiner rejects certain claims, and the applicant abandons his ap plication, the claims disallowed are not in validated ; McCormick H. M. Co. v. Aultman Co., 169 U. S. 606, 18 Sup. Ct. 443, 42 L. Ed. 875.
No action lies on the original patent after its surrender for re-issue; Burrell v. Hack ley, 35 Fed. 833. A patentee, imposing words of limitation upon himself in his claim in taking out a re-issue, is bound thereby in subsequent suits on the re-issued patent; Crawford v. Heysinger, 123 II. S. 589, 8 Sup. Ct. 399, 31 Ed. 269.
A patent cannot be re-issued to enlarge a claim unless there has been a clear mis take in the wording of the claim, and an application is made within a reasonably short period after the original patent was granted; Parker & Whipple Co. v. Clock Co., 123 U. S. 87, 8 Sup. Ct. 38, 31 L. Ed. 100;
Huber v. Mfg. Co., 148 U. S. 270, 13 Sup. Ct. 603, 37 L. Ed. 447.
A re-issue of a patent for an invention, after the expiration of foreign patents for the same invention is invalid; Commercial Mfg. Co. v. Canning Co., 135 U. S. 176, 10 Sup. Ct. 718, 34 L. Ed. 88.
Of patents for designs. The act of 1870 (amended May 2, 1902) permits any person to obtain a patent for a design, which shall continue in force for three and a half, seven, or fourteen years, at the option of the ap plicant. These patents are granted wher ever the applicant has invented any new ornamental and original design for an ar ticle of manufacture, not known or used by others in this country before his invention thereof, or patented or described in any printed publication in this or any foreign country before his invention thereof, or more than two years before his application, and not in public use or on sale in this country for more than two years prior to his ap plication, unless abandoned ; Rowe v. Clapp Co., 112 Fed. 61, 50 C. C. A. 120.
A design is created by the imposition upon a physical substance of some peculiar shape or ornamentation which produces a particu lar impression upon the human eye, and through the eye, upon the mind. Its creation involves a change in the substance itself and not merely in the mode of presenting it for sale; and affects, not its abstract qualities, nor those on which its practical utility de pends, but those only which determine its appearance to the sight; Rob. Pat. § 200; it must have esthetic value; Eaton v. Lewis, 115 Fed. 635, affirmed in 127 Fed. 1018, 61 C. C. A. 562; it is not enough that it iden tifies the article as a trade mark ; Rowe v. Clapp Co., 112 Fed. 61, 50 0. C. A. 120.
The acts of congress were plainly intended to give encouragement to the decorative arts ; they contemplate not so much utility as appearance; Gorham Co. v. White, 14 Wall. (U. S.) 511, 20 L. Ed. 731. A design is patentable though not more beautiful than former ones; Lehnbeuter v. HolthauS, 105 U. S. 94, 26 L. Ed. 939. Design patents require as high a degree or exercise of the inventive or originative faculty as utility patents; Western Elec. Mfg. Co. v. Odell, 18 Fed. 321. Where scrollwork is used there must be something peculiar to sustain a patent ; Soeh ner v. Range Co., 84 Fed. 182, 28 C. C. A. 317.
A design patent cannot be enlarged in its. scope from the specifications ; Frank v. Hess, 84 Fed. 170.