(264 F.) [1] The article in question is a very old one in kind, and the prior art is filled with varieties in form. The fact that there was no exact combination like Rosenwasser's, and that his produces a better legging than any prior one, is not conclusive of patentability. The District Judge found, and we think rightly found, it to lack invention. It is rather a step in advance, made in the ordinary course of improvement by a person skilled in the art. Many of the other forms of leggings were excellent, and are still used with entire satisfaction. Rosenwasser's, though a better, was not a new, result. No crying need existed, which persons skilled in the art were striving to meet, and which were met by the patented combination, so as to altogether or largely displace former combinations. While it is not possible to definite scientifically what improvements are entitled to be called inventions, we agree with the District Judge that Rosenwasser's combination of old elements is not entitled to be so described. [2] The District Judge, however, relied also upon a second reason for dismissing the bill. Assuming the combination to be an invention, he held that in Rosenwasser's earlier application of August 23, 1910, the examiner in the Patent Office ruled out the subject of the patent sued on, and Rosenwasser acquiesced in this action by deleting everything relating to it from the application. This the District Judge regarded as a surrender of the invention, if it be one, to the public. In this we think he erred, and as an important matter of practice is involved it seems well to say so. Rosenwasser's original application of August 23, 1910, covered two forms of legging; one having no central hook, for which patent 979,708 was issued December 27, 1910, on his original application, and also one having a central hook, for which upon a subsequent application of December 22, 1910, the patent now sued on was issued March 28, 1911. Claims 1 and 2 of the original application were broad and generic, and were rejected by the Examiner on the prior art. If they had been allowed, both forms of the invention would have been covered by a single patent. The Examiner did not reject either specific form of invention, or require the applicant to surrender either, but only to limit his claim to one, and file a separate application for the other. Rosenwasser, not being able to get one patent covering both specific forms, withdrew the form having a central hook, and filed another application for a patent to cover it, five days before the patent for the legging without the central hook issued. Therefore the applications were copending. The course taken was in accordance with rule 42 of the Patent Office which reads: “42. If several inventions, claimed in a single application, be of such a nature that a single patent may not be issued to cover them, the inventor will be required to limit the description, drawing and claim of the pending application to whichever invention he may elect. The other inventions may be made the subjects of separate applications, which must conform to the rules applicable to original applications." Obviously Rosenwasser did not abandon the invention which he withdrew from the original application, but only his application for it. Hayes-Young Co. v. St. Louis Co., 137 Fed. 80, 70 C. C. A. 1. Walker, on the subject, says: "Sec. 145. Where an application covers two inventions, one of which is withdrawn therefrom by division, and made the subject of a divisional application, that new application relates back to the original application from which it was carved, and is not chargeable with any diminution of significance on account of the transaction." For want of invention, however, the decree is affirmed. MANTON, Circuit Judge (dissenting). As the prevailing opinion says, the prior art, which forms a large part of the record here, is filled with varieties in form of leggings. The prior art does not disclose any exact combination, as does the patent in suit. This legging has been commercially successful. I cannot agree with the prevailing opinion, which says there is lack of invention. The features which are new in the legging provide for a metal stiffening member on both flaps, a single hook, with a plurality of eyes on the flaps, co-operating with the metal stiffness, and a lacing thread through the hook and eyes for adjusting and holding the legging in place. This combination of elements, some of which were old in the art, produces a new result, in that by a single straight end pull of the lacing a more uniform overlapping of the ends of the legging is obtained. The operation of lacing may be completed with one pull. By this arrangement the ends of the legging do not wrinkle, and the elimination of some exposed hooks, which might catch foreign substances, such as grass and twigs of trees, is an improvement. An examination of the prior art, indicating the grant of many patents, because of improvements which, to me, are less substantial and successful than the one here in question, convinces me that we should sustain the Patent Office in holding that this legging is new and patentable. The presumption of validity flowing from the grant by the Patent Office is too often lightly considered. HURLEY v. COMMISSION OF FISHERIES OF VIRGINIA et al. 1. Fish 7 (1)—Oysters planted on natural oyster lands abandoned to public. One who plants oysters on natural oyster lands, and thus mingles them with the oysters growing naturally, is conclusively held to have abandoned them to the public, and has no property right therein, unless such right is conferred by statute. 2. Constitutional law ~43 (2) —Invoking statute estops from denying validity. A complainant cannot be heard to allege the unconstitutionality of a statute he has himself invoked and relied on. 3. Constitutional law 278 (6)-Complainant held to have no property in oysters within due process of law provision. Complainant, who planted oysters on natural oyster lands of the state of Virginia, as delimited by official survey, where the state commission For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes (264 F.) of fisheries found that the land had never been assigned to him or his assignors, and therefore denied his right to remove the oysters under State Oyster Law, § 15, authorizing such removal where without his default the land has been assigned to the planter through mistake of an officer, held to have no property in such oysters of which he was unconstitutionally deprived by refusal to permit their removal. Waddill, District Judge, dissenting. In Equity. Suit by J. W. Hurley against the Commission of Fisheries of Virginia and others. On motion for preliminary injunction. Denied. Thomas J. Downing, of Lancaster, Va., Herbert I. Lewis, of West Point, Va., and Thomas B. Snead, of Richmond, Va., for plaintiff. Robert W. Shultice, of Norfolk, Va., for defendants. Before PRITCHARD and WOODS, Circuit Judges, and WADDILL, District Judge. WOODS, Circuit Judge. The complainant, J. W. Hurley, asks that the Commission of Fisheries and the two inspectors named in the bill be enjoined from removing the stakes and opening to the public two parcels of natural oyster land on the Rappahannock river, containing 31.90 acres, until he has been allowed time to remove the oysters planted by him thereon. The injunction is sought on the ground that the complainant is about to be deprived of his property (1) without due process of law, and (2) without compensation. The Constitution of Virginia (section 175) provides: "The natural oyster beds, rocks, and shoals, in the waters of this state, shall not be leased, rented or sold, but shall be held in trust for the benefit of the people of this state, subject to such regulations and restrictions as the General Assembly may prescribe, but the General Assembly may, from time to time, define and determine such natural beds, rocks or shoals, by surveys or otherwise." The statute law of the state prohibits under penalty the occupancy and the planting of oysters and oyster shells in natural oyster beds, and requires each inspector to demand the removal of all stakes and other obstructions from such beds, rocks, or shoals in his territory, and upon failure of the trespasser to comply to remove them himself. 1 Pollard Code 1904, § 2153, act of 1916. The statute of 1892, amended by the act of 1894, provided for a survey of all natural oyster beds, to be conclusive evidence that all land within the survey was natural oyster land, and all without was not natural oyster land. The survey made under these statutes, known as the "Baylor Survey," is now the authoritative representation of the natural oyster lands of the state. Statutory provision was made for the leasing of other submerged lands and planting or propagation of oysters thereon. The person desiring to lease was required to obtain a location by application to the inspector and having it "ascertained and designated and surveyed" and "marked with suitable stakes," "or by other metes and bounds, courses and distances, having their places of beginning and ending designated by permanent objects on the shore agreed upon between the applicant and inspector." 1 Pollard Code 1904, § 2137, amendment of 1916. Complainant in 1903 obtained by assignment leases of several parcels of submerged lands covering, as he claims, 47.48 acres. The assignments and plats obtained by the original lessees, except one very small assignment, were duly recorded. Upon representation that the complainant had his stakes so set as to include natural oyster lands embraced in the Baylor survey, and that he was planting and gathering oysters thereon to the exclusion of the citizens of the state contrary to law, the commission of fisheries, in compliance with the statute, had the Baylor lines resurveyed by F. E. Ruediger, the engineer for the commission. There is no question of the accuracy of this survey of the Baylor lines, or of the demonstration by it that complainant has in possession two parcels of natural oyster ground within the Baylor survey, one of 26.90 acres and the other of 5 acres. [1] If this were all, obviously the complainant would have no ground whatever to assert ownership of the oysters planted by him on the natural oyster rocks of the state. The rule of the common law is well settled that one who in good faith plants oysters on submerged land which is not natural oyster land-on which oysters do not grow naturally-has the ownership of them, and may remove them, although he has not leased the land from the state; but it is equally well settled that one who plants oysters on natural oyster lands, and thus mingles them with the oysters growing naturally, is conclusively held to have abandoned them to the public. Grace v. Willets, 50 N. J. Law, 414, 14 Atl. 559; Payne et al. v. Providence Gas Co., 31 R. I. 295, 77 Atl. 145, Ann. Cas. 1912B, 65, 73; People v. Morrison, 194 N. Y. 175, 86 N. E. 1120, 128 Am. St. Rep. 552; State v. Taylor, 27 N. J. Law, 117, 72 Am. Dec. 347. The complainant at the hearing admitted, as was demonstrated by the resurvey of the Baylor lines, that he had planted the oysters on the state's natural oyster grounds; and it followed as a matter of law that they became the property of the state, open to the public, unless the complainant could bring himself within the terms of the statutes of 1899 and 1910 hereinafter referred to. In Commission of Fisheries v. Hampton Roads Oyster Packers' & Planters' Association, 109 Va. 565, 64 S. E. 1041, the Supreme Court of Appeals, reviewing all of the statutes passed prior to 1909 on the subject, held (1) that the Baylor survey was made by statute conclusive evidence of the area of the natural oyster grounds of the state; (2) that the statutory enactment to that effect was constitutional; (3) that, though the duties of an inspector are quasi judicial, neither he nor any other official can confer exclusive rights to oyster land within the survey by assignment or otherwise. The correctness of these conclusions is made so clear, both on principle and authority, by the reasoning of the court and the authorities cited, that further discussion would be superfluous. The complainant, having under the common law no legal interest in the land or the oysters, could not allege the statute under which the commission of fisheries ordered the natural oyster land opened to the public to be unconstitutional, on the ground that it did not provide that he should have notice and a hearing. Having by the common law no (264 F.) property in the oysters planted, complainant had nothing to be compensated for, or to be protected by due process of law, unless he can show a property right conferred by the statute law of Virginia. In this situation he invoked and relied upon the following statutes of 1899 and 1910, under which he applied to the commission of fisheries to be allowed to remove the oysters: "When, by any resurvey of oyster-planting grounds or survey made to reestablish the lines of the state survey of natural oyster beds, rocks or shoals which shall hereafter be made under the direction of the commission of fisheries, it shall appear that any holder, without his own default, and by mistake of any officer of the state, has assigned to him and included in the plat of his assignment any portion of the natural oyster beds, rocks or shoals as defined by law, and it shall further appear that such holder has oysters or shells planted on the said ground, then, before the stakes shall be removed from said ground or the same opened to the public, the said holder shall be allowed a reasonable time, the length of which is to be determined by the commission of fisheries, in their discretion (and duly advertised), within which to remove his planted oysters or shells from the said ground." After two full hearings, in which testimony was taken and argument made, the commission of fisheries decided that complainant had not brought himself within the conditions imposed by the act of 1910, and refused to allow him to remove oysters from the natural oyster land occupied by him. [2] The complainant cannot be heard to allege the unconstitutionality of a statute he has himself invoked and relied on. Williams v. Eggleston, 170 U. S. 304, 18 Sup. Ct. 617, 42 L. Ed. 1047; Chicago, etc., Railroad v. Nebraska, 170 U. S. 57, 18 Sup. Ct. 513, 42 L. Ed. 948; Kansas City, etc., R. R. Co. v. Stiles, 242 Ū. S. 111, 37 Sup. Ct. 58, 61 L. Ed. 176; Kryger v. Wilson, 242 U. S. 171, 37 Sup. Ct. 34, 61 L. Ed. 229. [3] The clause we have italicized shows that the state has conferred on a holder the right to remove oysters which he has planted on natural oyster ground on these express conditions: (1) The natural oyster ground must have been assigned to him and included in the plat of his assignment; (2) it must have been so included without his fault; and (3) it must have been so included by the fault of an officer of the state. The evidence relied on to show assignment of the ground to complainant's predecessor under the lease is contained in affidavits to the effect that Hart, who was inspector at the time, was a very careful and diligent official; that the stakes were never removed from their original location; and that Hart would not have allowed them within the Baylor line, if he had not made the mistake of assigning the ground within the stakes to the lessees. Against this affidavits were submitted by the defendants to the effect that before complainant got the leases the stakes had been intentionally placed further out, within the Baylor survey, and that the stubs of the old stakes nearer the shore are still to be found. Any possible doubt on this point, however, is entirely dispelled by the affidavit of Ruediger, the engineer, in which he states: |