[49]*49DUFFY, Circuit Judge.
This is a suit for alleged infringement of United States Reissue Patent No. 24,-535, entitled “Shelving Unit.” The reissue patent in suit was issued September 16, 1958 on an application filed January 22, 1958. The application for reissue was based upon the original Franks Patent No. 2,815,130 which was issued December 3, 1957 on an application filed on February 6,1956.
Defendant is charged with infringing Claims 3 and 4 of the reissue patent. Claims 3 and 4 of the original Franks Patent defined a rack or shelving support unit for holding storage pallets, formed of two pairs of vertical posts and a pair of spaced parallel shelf rails extending horizontally between each pair of vertical posts. Each of the shelf rails had a fiat top surface on which the end of the pallet rested. The top inside corner or edge portion of such rail was stepped down to form: “ * * * a flat horizontal offset surface inwardly from said upper surface and spaced below the upper surface intermediate the depth of the rail and joined to the upper surface by a substantially vertical shoulder, each offset surface having a horizontal width greater than one-half1 the height of said shoulder. * * * ” The step or offset was intended to catch the end of a pallet if it should slip inwardly and drop from the flat top of the rail.
In the reissue application, Claims 3 and 4 of the original patent were changed to read: “ * * * each offset surface having a horizontal width greater than one-third [one-half] the height of said shoulder.” The specification of the reissue patent was likewise changed from one-half to one-third to provide a disclosure to support the reissue claims.
Defendant made a motion for summary judgment predicated on the contention that the controlling rule of law in the case at bar was defined and stated in Crane Packing Company v. Spitfire Tool & Machine Co., 7 Cir., 276 F.2d 271. The District Court denied the motion for summary judgment saying: “ * * * I have come to the conclusion it is not an extension of the patent sufficient to render a summary judgment on it. * * * I think it is an extension. It was embraced in the original patent. It does not come within that one year provision. * *
Plaintiff and defendant each cite the Spitfire case. They do not agree on the interpretation of the language used by this Court in that opinion. Other members of the patent bar in briefs filed in this Court in other eases as well as on other occasions, have differed on the interpretation to be placed on the language used by us in the Spitfire opinion. Due to these conflicting interpretations of Spitfire, this Court concluded that the argument of this case would be a suitable occasion for this Court, sitting em banc, to consider the conflicting opinions mentioned.
In Crane Packing Company v. Spitfire Tool & Machine Co., 7 Cir., 276 F.2d 271, we were considering the contention that Claims 1 to 4, inclusive, and Claims 9 to 14, inclusive, of Bullard Reissue Patent No. 23,937 had been infringed. This reissue patent was issued on February 8, 1955 on an application filed June 25, 1953. The original patent No. 2,565,590 had been issued August 28, 1951 on an application filed March 28, 1948.
In Spitfire, the District Court held Claims 1 to 4, inclusive, and Claims 9 and 10 to be invalid as being obvious to one skilled in the art. This Court approved. We stated, 276 F.2d at page 273: “There are no ‘unusual or surprising consequences from the unification of the elements here concerned’ nor did Bullard’s use of the features claimed ‘add to the sum of useful knowledge.’ ” We cited the A & P case, [Great Atlantic & Pacific Tea Co. Supermarket Equipment Corp.] 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162. We then added: “The feature claimed lacks the impalpable something which distinguishes invention from simple mechanical skill.”
[50]*50Our holding as to the invalidity of Claims 1 to 4, inclusive, and Claims 9 and 10, would seem to be perfectly clear. As far as we know, there has been no dispute as to the meaning of the language in our opinion in Spitfire as to those claims.
We held Claims 11 to 14, inclusive in Spitfire were invalid because the device incorporating those claims was on sale and in use more than one year prior to the filing of the reissue application. It was our discussion of the reasons for •this holding that has stirred up the controversy hereinbefore mentioned.
One distinguished patent counsel in another case before this Court characerized our holding as to Claims 11 to 14, inclusive in Spitfire as follows: “In substance this holding means that the prior art, against which any reissue patent is to be measured, is not simply the prior art as of the date of the filing of the original application but also all art which became available in the interval between the filing of the original application and a period of one year prior to the filing of the reissue application. Section 102(b) includes as prior art not only that which is ‘in public use or on sale’ more than one year prior to application for patent, but also that which ‘was patented or desscribed in a printed publication.’ Since the issuance of an original patent places it in the prior art, both as a patent and as a printed publication, the above quoted holding would necessarily render invalid any reissue patent, the application for which was filed more than one year after the issuance of the original patent.” It is certain that this Court did not intend to announce a rule making such a revolutionary change as to the issuance of reissue patents.
In 1821, James Grant received a patent for an improved method of making hat bodies. In 1825 he presented a petition to Henry Clay, the Secretary of State, saying that the specification of his patent was defective, and asking that the existing patent be cancelled and a new and corrected one be granted. There was no statute to-'authorize such a proceeding, but Clay did cancel the original patent and issued to Grant new letters patent for the residue of the term covered by the original patent.
Suit was brought on the reissue patent and infringement was found. In the Supreme Court it was urged that the reissue was invalid since the invention had been made public by the issuance of the original patent four years before the application for reissue, and had been in use three years before the application for reissue was filed. The Supreme Court rejected these arguments in Grant v. Raymond (1832), 6 Pet. 218, 31 U.S. 218, 244, 8 L.Ed. 376. In the opinion by Chief Justice Marshall, the Supreme Court stated: “But the new patent, and the proceedings on which it issues, have relation to the original transaction. The time of the privilege still runs from the date of the original patent. The application may be considered as appended to the original application. * * *”
Thereafter, on July 3, 1832, Congress enacted a statute to regulate the reissuance of patents. 4 Stat. 559. This Act provided that no public use after the grant of the original patent should prejudice the patentee in recovering for infringement after the grant of the reissue patent.
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[49]*49DUFFY, Circuit Judge.
This is a suit for alleged infringement of United States Reissue Patent No. 24,-535, entitled “Shelving Unit.” The reissue patent in suit was issued September 16, 1958 on an application filed January 22, 1958. The application for reissue was based upon the original Franks Patent No. 2,815,130 which was issued December 3, 1957 on an application filed on February 6,1956.
Defendant is charged with infringing Claims 3 and 4 of the reissue patent. Claims 3 and 4 of the original Franks Patent defined a rack or shelving support unit for holding storage pallets, formed of two pairs of vertical posts and a pair of spaced parallel shelf rails extending horizontally between each pair of vertical posts. Each of the shelf rails had a fiat top surface on which the end of the pallet rested. The top inside corner or edge portion of such rail was stepped down to form: “ * * * a flat horizontal offset surface inwardly from said upper surface and spaced below the upper surface intermediate the depth of the rail and joined to the upper surface by a substantially vertical shoulder, each offset surface having a horizontal width greater than one-half1 the height of said shoulder. * * * ” The step or offset was intended to catch the end of a pallet if it should slip inwardly and drop from the flat top of the rail.
In the reissue application, Claims 3 and 4 of the original patent were changed to read: “ * * * each offset surface having a horizontal width greater than one-third [one-half] the height of said shoulder.” The specification of the reissue patent was likewise changed from one-half to one-third to provide a disclosure to support the reissue claims.
Defendant made a motion for summary judgment predicated on the contention that the controlling rule of law in the case at bar was defined and stated in Crane Packing Company v. Spitfire Tool & Machine Co., 7 Cir., 276 F.2d 271. The District Court denied the motion for summary judgment saying: “ * * * I have come to the conclusion it is not an extension of the patent sufficient to render a summary judgment on it. * * * I think it is an extension. It was embraced in the original patent. It does not come within that one year provision. * *
Plaintiff and defendant each cite the Spitfire case. They do not agree on the interpretation of the language used by this Court in that opinion. Other members of the patent bar in briefs filed in this Court in other eases as well as on other occasions, have differed on the interpretation to be placed on the language used by us in the Spitfire opinion. Due to these conflicting interpretations of Spitfire, this Court concluded that the argument of this case would be a suitable occasion for this Court, sitting em banc, to consider the conflicting opinions mentioned.
In Crane Packing Company v. Spitfire Tool & Machine Co., 7 Cir., 276 F.2d 271, we were considering the contention that Claims 1 to 4, inclusive, and Claims 9 to 14, inclusive, of Bullard Reissue Patent No. 23,937 had been infringed. This reissue patent was issued on February 8, 1955 on an application filed June 25, 1953. The original patent No. 2,565,590 had been issued August 28, 1951 on an application filed March 28, 1948.
In Spitfire, the District Court held Claims 1 to 4, inclusive, and Claims 9 and 10 to be invalid as being obvious to one skilled in the art. This Court approved. We stated, 276 F.2d at page 273: “There are no ‘unusual or surprising consequences from the unification of the elements here concerned’ nor did Bullard’s use of the features claimed ‘add to the sum of useful knowledge.’ ” We cited the A & P case, [Great Atlantic & Pacific Tea Co. Supermarket Equipment Corp.] 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162. We then added: “The feature claimed lacks the impalpable something which distinguishes invention from simple mechanical skill.”
[50]*50Our holding as to the invalidity of Claims 1 to 4, inclusive, and Claims 9 and 10, would seem to be perfectly clear. As far as we know, there has been no dispute as to the meaning of the language in our opinion in Spitfire as to those claims.
We held Claims 11 to 14, inclusive in Spitfire were invalid because the device incorporating those claims was on sale and in use more than one year prior to the filing of the reissue application. It was our discussion of the reasons for •this holding that has stirred up the controversy hereinbefore mentioned.
One distinguished patent counsel in another case before this Court characerized our holding as to Claims 11 to 14, inclusive in Spitfire as follows: “In substance this holding means that the prior art, against which any reissue patent is to be measured, is not simply the prior art as of the date of the filing of the original application but also all art which became available in the interval between the filing of the original application and a period of one year prior to the filing of the reissue application. Section 102(b) includes as prior art not only that which is ‘in public use or on sale’ more than one year prior to application for patent, but also that which ‘was patented or desscribed in a printed publication.’ Since the issuance of an original patent places it in the prior art, both as a patent and as a printed publication, the above quoted holding would necessarily render invalid any reissue patent, the application for which was filed more than one year after the issuance of the original patent.” It is certain that this Court did not intend to announce a rule making such a revolutionary change as to the issuance of reissue patents.
In 1821, James Grant received a patent for an improved method of making hat bodies. In 1825 he presented a petition to Henry Clay, the Secretary of State, saying that the specification of his patent was defective, and asking that the existing patent be cancelled and a new and corrected one be granted. There was no statute to-'authorize such a proceeding, but Clay did cancel the original patent and issued to Grant new letters patent for the residue of the term covered by the original patent.
Suit was brought on the reissue patent and infringement was found. In the Supreme Court it was urged that the reissue was invalid since the invention had been made public by the issuance of the original patent four years before the application for reissue, and had been in use three years before the application for reissue was filed. The Supreme Court rejected these arguments in Grant v. Raymond (1832), 6 Pet. 218, 31 U.S. 218, 244, 8 L.Ed. 376. In the opinion by Chief Justice Marshall, the Supreme Court stated: “But the new patent, and the proceedings on which it issues, have relation to the original transaction. The time of the privilege still runs from the date of the original patent. The application may be considered as appended to the original application. * * *”
Thereafter, on July 3, 1832, Congress enacted a statute to regulate the reissuance of patents. 4 Stat. 559. This Act provided that no public use after the grant of the original patent should prejudice the patentee in recovering for infringement after the grant of the reissue patent. A more comprehensive patent act was passed in 1836, and included a provision for the reissuance of patents. That provision read (5 Stat. 117, Chap. 357, sec. 13): “ * * * And the patent, so reissued, together with the corrected description and specification, shall have the same effect and operation in law, on the trial of all actions hereafter commenced for causes subsequently accruing, as though the same had been originally filed in such corrected form, before the issuing out of the original patent. * * *»>
In Spitfire, we discussed the 1952 Patent Codification Act. It is clear that throughout the long period from 1832 to 1952, the Patent Office and the Courts uniformly recognized that the reissue of a patent was an amendment or correction of the original patent, and that such [51]*51reissue patent was to be judged on the basis of the prior art that existed at the time of the original application.
The vital question to be now considered is whether the Patent Codification Act of 1952 changed the law as it had existed since 1832. We consider it significant that there has been no statement by the Revisor or any member of Congress or in any report by Congress that even suggests that the Patent Act of 1952 set up a different standard of prior art for reissue patents than that which had existed for so many years.
The Patent Office practice as to reissue patents was not changed after the passage of the 1952 Patent Code. Some 1200 reissue patents have been issued under the 1952 Code. About 500 of these would be invalid if the correct interpretation of the Patent Code is that a reissue patent may not issue if the application therefor was filed more than one year after the date of the issue of the original patent.
Under 35 U.S.C.A. § 102(b), an application for a patent must be denied if “ * * * [T]he invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States * * *.”
The section of the Patent Code of 1952 which states the conditions upon which a reissue patent may be issued is 35 U.S. C.A. § 251. For the first time there appeared an express statutory recognition of the right to have a broadened reissue. The provision is “No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.” This provision would seem to be entirely inconsistent with an intent to deprive a patentee of his rights as they existed with respect to the prior art at the time of his original application. As to a narrower reissue, if a patentee believed he had claimed too broadly, the paragraph does not indicate an intent that the patentee could correct the situation only by subjecting his rights to re-examination in the light of all of the intervening art.
It is the third paragraph of section 251 which has caused some difference in opinion as to the intent of Congress. Instead of again reciting the procedural provisions relating to Patent Office practice, it provides: “The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.”
In our view, the references in section 251 to “ * * * [Provisions of this title relating to applications for patent * * *.” are to those sections in Chapter 11 entitled “Application for Patent,” rather than a reference to section 102 which is entitled “Conditions for patentability; novelty and loss of right to patent” which appears in Chapter 10 entitled “Patentability of Inventions.”
There is nothing in the 1952 Patent Code to indicate that Congress intended thereby to change the long-established view as to reissue patents, that the defective patent, although amended and corrected, is still the same patent.
It is difficult to conceive that Congress, in the last paragraph of section 251, would expressly provide that a broadened reissue patent may be applied for within two years of the grant of the original patent and by implication say that a narrowed reissue patent may be applied for over a longer period, if in the preceding paragraph it had referred to section 102(b) with the intent that all applications for reissue more than one year after publication of the original patent would be invalid. Had there been any intent to drastically alter the conditions of patentability with respect to reissue patents, Congress could and would have used appropriate language to say so.
[52]*52In Ex parte Strassburger, 127 USPQ 417, the Patent Office Board of Appeals, in an opinion written by the Examiner in Chief, refused to follow our opinion in Spitfire assuming that what we there said was, in effect, that a reissue patent could not be validily issued if the application therefor was more than one year later than the date of the issue of the original patent.
Turning now to the reissue patent in the case at bar, defendant-appellant states the contested issues as 1) whether Claims 3 and 4 of Franks Reissue Patent No. 24,535 which are different from and broader than any claims in Franks original patent, are valid because of prior public use and sale more than one year prior to the filing of the application of the reissue patent, and 2) whether Claims 3 and 4 of the reissue patent are “enlargements” within the meaning of the Spitfire case in view of England v. Deere & Company, 7 Cir., 284 F.2d 460.
The question before us for decision is whether the District Court erred in refusing to grant defendant’s motion for a summary judgment. We granted the petition for an allowance of an appeal under the Interlocutory Appeals Act of 1958, 28 U.S.C.A. § 1292b.
In our opinion, the District Court was correct in not granting defendant’s motion for a summary judgment. That Court could not properly say, as a matter of law, that judgment should be awarded to the defendant. There then existed some confusion as to our holding in the Spitfire case and its application, if any, to the instant case. We think the District Court should consider the case at bar on the merits.
The order denying the defendant’s motion for summary judgment is
Affirmed.