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154 Ct. 01. Opinion of the Court States Army only. His Reserve commission was terminated under the authority of section 37 of the Act of June 3, 1916, and he was made an officer of the United States Army under the authority of section 1 of the Act of May 18, 1917, quoted infra.

By paragraph 1 of Circular No. 75, all such officers, save only officers in the Regular Army, were to be discharged, and by paragraph 3 it was provided that “Such discharges will be a complete separation of the individual from the military service and will terminate all commissions held by him in the Officers' Reserve Corps or otherwise.”

There would seem to be no doubt that under General Orders No. 73 and Circular No. 75 plaintiff was completely separated from the military service by his discharge on July 9, 1919. Plaintiff seems to have understood that at the time, because he later applied for and received a new commission in the Reserve Corps, as he was permitted to do under the terms of paragraph 3 of Circular No. 75, quoted supra.

No question is raised as to the authority to issue General Orders No. 73, or Circular No. 75; nor do we think it can be questioned. The third paragraph of section 1 of the Draft Act of May 18, 1917, supra, authorized the President to:

* * * provide the necessary officers, [for the 500,000 men authorized] *** by ordering members of the Officers' Reserve Corps to temporary

duty in accordance with the provisions of section thirty-eight of the national defense Act approved June third, nineteen hundred and sixteen; by appointment from * * * the

Officers' Reserve Corps * *
Pursuant thereto, plaintiff was ordered to duty.

By General Orders No. 73 the President terminated plaintiff's Reserve commission, and converted it into a commission in the United States Army. He was authorized to do this by section 37 of the Act of June 3, 1916. This section reads in part:

Section 37. * * * The commissions of all officers of the Officers' Reserve Corps shall be in force for a period of five years unless sooner terminated in the discretion of the President. Such officers may be recommissioned, either in the same or higher grades, for successive

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Syllabus

periods of five years, subject to such examinations and

qualifications as the President may prescribe * * *. Plaintiff's commission in the Officers' Reserve Corps was for a period of five years “unless sooner terminated in the discretion of the President.” After General Orders No. 73, plaintiff held a commission only in the United States Army, which was issued under the authority of the Draft Act of May 18, 1917, supra.

Then under section 9 of the 1917 Act the President was authorized to discharge all such officers when he thought this would promote the public service. Section 9 reads as follows:

That the appointments authorized and made as provided by the * * third * * *

paragraphs of section one *** of this Act, shall be for the period of the emergency, unless sooner terminated by discharge or otherwise. The President is hereby authorized to discharge any officer from the office held by him under such appointment for any cause which, in the judgment of

the President, would promote the public service; * * For the period between July 9, 1919, and January 28, 1920, plaintiff was not in the military service and, without including this period, plaintiff does not have the requisite 20 years' service required by the statute, and, hence, he is not entitled to recover.

Defendant's motion for summary judgment is granted. Plaintiff's motion for summary judgment is denied and his petition will be dismissed.

It is so ordered.

DURFEE, Judge; LARAMORE, Judge; MADDEN, Judge, and JONES, Chief Judge, concur.

NICHOLAS STRAUSSLER v. THE UNITED STATES

[No. 209–59. Decided June 7, 1961]

ON DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

Patents; infringement; estoppel-file wrapper.-In an action by

plaintiff to recover the reasonable and entire compensation for the use and manufacture by the United States of plaintiff's patented invention covering a propulsion device for amphibious

154 Ct. Cl. Opinion of the Court motor-driven vehicles, the defendant moved for summary judgment dismissing the petition on the ground that plaintiff is barred from asserting infringement under the doctrine of file-wrapper estoppel in that plaintiff had abandoned all claim of right to patent protection on the particular device incorporated in the Government's accused structure. It is held that plaintiff did not abandon the claim on which his suit is based but merely cancelled a part of the specification referring to an optional arrangement of elements in a patentable combination in lieu of filing additional drawings. Defendant's motion is

denied. Pleading and practice; summary judgment-infringement of patent

Whether the claims of a patent read directly on the accused infringing device or whether the device is the equivalent of the patented device, are questions of fact which will not be decided

on a motion for summary judgment. Courts m 470 Estoppel; patents; file-wrapper estoppel.—The cancellation of un

illustrated subject matter after a request by the patent examiner that it be illustrated, does not constitute file-wrapper estoppel such as would prevent a patentee from asserting that

the allowed claims also covered the cancelled description. Patents em 168(1) Patents; specifications—what constitutes.—The specifications of a

patent do not serve the same purpose as patent claims. Specifications do not necessarily measure the invention and need only disclose an operative embodiment of the invention in such a manner that one having ordinary skill in the art will be

taught how to utilize the invention. Patents Om 99

Paul M. Rhodes, for the plaintiff.

E. R. Weisbender, with whom was Assistant Attorney General William H. Orrick, Jr., for the defendant.

JONES, Chief Judge, delivered the opinion of the court:

This is a suit for infringement of United States Letters Patent 2,398,057 issued to the plaintiff on April 9, 1946, and disclosing a propulsion device for amphibious motor-driven vehicles. The plaintiff claims that the defendant has infringed this patent by the manufacture of such military amphibious equipment as the “Otter," the “Duck," and the T-46E-1 cargo carrier. The defendant has not answered the complaint, but under Rule 51(b) has moved for summary judgment on the grounds that the plaintiff is barred from

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Opinion of the Court

asserting infringement under the doctrine of file-wrapper estoppel. The facts are as follows:

On May 19, 1943, the plaintiff, a British subject, filed an application for a United States patent on certain features of a propulsion device for amphibious vehicles which he alleged he had invented. Stating only the most important elements, the device included, in a somewhat linear arrangement, a drive shaft, a driving clutch member, a driven clutch member, a propeller shaft and a propeller. The drive shaft and the propeller shaft were linked together by a hinge directly over the two clutch members in such a way that the propeller shaft and the attached propeller could be raised and lowered. Further, since the hinge was placed directly over the clutch members, raising the propeller shaft disengaged the two clutch members and terminated the transmission of power from the drive shaft through the clutch and the propeller shaft to the propeller. Similarly, when the propeller shaft was lowered the clutch members would engage and motive power could be transmitted to the propeller. The arrangement was said to be useful for powering amphibious vehicles. In deep water, the propeller would be driven and would function precisely as a ship's propeller. In shallow water or on land, the propeller and its shaft could be raised out of possible contact with the ground.

In a modification of this basic combination the plaintiff disclosed that the propeller shaft could comprise two sections connected by a universal joint. Thus modified, the entire propeller shaft could be lowered into position, the clutch members engaged and power transmitted to spin the propeller. In addition, and at the same time, the propeller and the distal part of the propeller shaft could be swung laterally. The driver, by swinging the propeller from side to side, could effectively steer the vehicle in the water much in the manner that a small fishing boat may be steered by swinging the outboard motor. In sum, then, the propeller shaft could be swung up and down, in and out of driving 154 Ct. Ci. Opinion of the Court engagement, and from side to side for steering. The arrangement of the two pivot points relative to the vehicle was not alleged to be significant. In this regard the plaintiff stated the following in the last paragraph of the original specification as filed:

1 The defendant also bases its motion on the grounds that in so far as the complaint 18 based on 35 U.S.C. $ 181 It is barred by the statutes of limitations, 28 U.S.C. $ 2501 and 35 U.S.C. $ 183; and that the complaint fails to state a cause of action under the Mutual Security Act of 1951, 65 Stat. 373, as amended, 22 U.S.C. | 1758. The plaintiff concedes these points in his brief.

670-59563 -19

The invention is not confined to the relative arrangements of the vertical and horizontal pivotal axes as described above, for by modifying the construction and arrangement of the parts they may be transposed so that the horizontal pivotal axis is arranged aft of the vertical pivotal axis. With such a modified form the universal shaft coupling would be arranged with its centre in line with the vertical pivotal axis but forwardly of the dog clutch which would be located immediately beneath the horizontal pivotal axis. Also as will be understood the construction of the casing would be modified accordingly and the universal shaft

coupling will connect the forward section of the propeller shaft to the rear end of the shaft g. Further only the rear section of the propeller shaft would be swung upwardly when the pro

peller is lifted for land use of the vehicle. The pivot permitting vertical swing of the shaft could be closest to the end of the vehicle with the pivot permitting lateral swing aft [modification I] or the pivot positions could be reversed [modification II].

The plaintiff originally filed six claims with his patent application. Claims 1, 2, and 6 were drawn broadly to the combination described first above, that is, to the device wherein the propeller shaft could only be moved up and down. Claims 3, 4, and 5 were dependent on claim 1 but were drawn to include the additional element which permitted lateral swing as in modification I. None of the claims was specifically drawn to the arrangement of elements which was described by the plaintiff in the last paragraph of the original specification (quoted above) and which we have called modification II.

In the first action on the application, the patent examiner rejected claims 1, 2, 3, and 6 as fully met by prior art. Claims 4 and 5 were rejected as based on subject matter not fully illustrated or described, but the examiner stated that these claims appear to be clear of the art.” Furthermore, the examiner stated that the arrangement of elements which

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