*1
GARRETT, Presiding Judge,
Before
BLAND, HATFIELD, LENROOT,
Judges.
JACKSON, Associate
LENROOT,
Judge.
Associate
appeal
This is an
an interference
Board of
proceeding
wherein
the United States
affirmed
the Examiner of
Interfer-
awarding
of invention of
ences
appellee.
in issue
matter
*2
appli- present
The interference
between an
mo-
interference
from a
resulted
25,
60,503
appellant
brought
cation of
filed on October
in Interference No.
1926,
144,034,
by
assigned to the
Calculating
Serial No.
Marchant
Machine Com-
Company, pany,
Avery
Calculating
assignee
Marchant
Machine
Friden and
appellee’s application
August
and
applications.
on
filed
17, 1927,
213,637, assigned
Serial No.
60,503
“When Interference No.
was re-
Calculating
the Monroe
Machine Com-
formed the
Friden
to dissolve
moved
pany. Appellant
therefore,
is,
the senior
ground
estopped.
on the
was
Chase
party.
This
by
motion was denied
the Examiner
of Interferences who
that the decision
improvements
The
held
invention relates to
binding
the Court was
the tribunals
calculating machines. Eleven counts are
involved;
though
rendered
question
Office even
because of the sole
party Avery
an
The
appeal
volved in this
it is
action.
deemed unneces-
sary
reargued
question
at
describe the invention in
detail
hearing
final
set
in" this interference.
It was
forth
of the counts-.
60,503
out
Interference No.
history
The
of the instant
ap-
was declared
nine months after
some
concisely
stated in the decision of the
peal had been taken in Interference No^
Examiner of Interferences herein as fol-
57,166
appeal
subsequently
which
was
dis-
lows :
by
Appeals.
missed
the Board of
It was
present
up
“The
set
was
suggested that
this fact was not called
result of a series of circumstances
to the attention of the Court and was
briefly
August
which will
outlined. On
urged that
this constitutes sufficient basis
13, 1928,
57,166
Interference
de-
was
ignoring
Chase-,
the decision of In re
clared which involved some seven
supra. This is not
to be the
believed
case-.
Chase,
including
ap-
While there is
nothing
the above deci-
plication
present Avery
of Friden
and
definitely
sion which
indicates
application.
During the motion
cer- Court
took into consideration the nature
tain motions to dissolve and to amend were of
dealing
the Board’s action in
with the
21,
filed.
January
In a decision dated
appeal
57,166,
in Interference No.
their
1930,
granted
the Law Examiner
mo-
decision was of record in the file of Inter-
tion to dissolve and denied a motion to
57,166,
appears
ference No.
file
presented
Chase,
amend
by
which had been
by
have been considered
the Court. The
party.
the senior
ap-
showing
which has been made
pealed by Chase,
appeal
dis-
party Avery is not considered
sufficient
missed
the Board of
on De-
justify the Examiner of Interferences
8,
cember
reaching
contrary
a conclusion
to that ex-
10, 1930,
“On October
Interference No. pressed in
Chase,
the decision of In re
60,503
was declared
Ex
supra.”
aminer between another
To this statement
it should be added
and the same
of Friden.
following the reformation of inter-
This interference was dissolved on the mo
60,503,
ference No.
made in
tion of Friden on
ground
that Chase that proceeding
applica-
to substitute the
failure,
estopped by
virtue of his
tion of
here involved for
forward his second
dur application
Thereafter,
of Friden.
as a
57,166.
proceedings
Interference No.
motion,
result of said
the instant
inter-
upheld by
This decision was
Board
ference was
Chase,
between
declared
but when the claims were re
here,
pellee
Avery.
jected
ap
on
he
Appellee
preliminary
filed a
statement
pealed, carrying
question
to the Court
alleging conception of
the invention in
Appeals.
of Customs and Patent
In its
practice
1922 and its reduction to
in 1924
decision,
Chase,
178,
In re
71 F.2d
447 O.
1925,
took testimony
supporting
997,
489,
G.
1934 C.D.
the Court reversed
Appellant
such dates.
took
testimony
Board,
Examiner
filing date,
and relies
25,
October
since the second interference
set
conception
and constructive re-
prior
up
the Office
to the termination
practice
duction
the invention.
the first
there was no'
Examiner
against Chase.
Accordingly,
In
Interferences
found
proofs presented by appellee
terference No.
reformed. The
es-
us,
reduced
other cases decided
conceived
tablished
appel-
declared
prior
practice
certain cases decided
the invention to
our de-
of Appeals
Court
date,
District
Co
filing
lant’s
Chase,
stated,
F.2d
lumbia.
our decision we
cision
case of
1183, appellee
Patents,
C.C.P.A.,
179:
*3
the claims
estopped
not
from
was
“Appellant
in the case at bar contends
He
in issue.
corresponding to the counts
that,
irrespective
propriety
ap-
of
invention to
priority of
therefore awarded
plying
the doctrine of
in cases
appellee.
cited, estoppel,
similar to those above
in
instance,
decision
Appellant appealed
such
apply
from
should not
on account
board
Appeals. The
af- of the special
the
First
Board of
facts involved.
it is
Examiner of ui'ged
voluntarily
firmed the decision
the
that Friden did
at-
not
stated:
tempt
acquire
In
decision it
involved,
Interferences.
its
the claims
that
the
knowing
Examiner
Avery
testimony.
chose to
“Chase took
Chase’s
second
the Frid-
rely upon
filing date for constructive
disclosure, sxigge'sted
copy
en
that Friden
examiner ana-
practice. The
reduction to
claims,
the
which was
After Friden
done.
presented
record
lyzed the testimonial
copied
brought
had
the claims and
about
clearly
proofs
that
found
the
Chase and
instigation
the
the
interference at
possession
he was in full
established that
Examiner, he made motion to dissolve
the
prior to
rec-
in issue
of the invention
oxx the
estopped.
that Chase was
relies. Al-
Avery
upon
ord dates
which
Thus Friden moved
dissolve the
inter-
appeal
includes cer-
though
the notice
provoked,
ference which he had
and which
holding by
the
relation
the
tain items in
possession
would
the
leave
claims in
the
Interferences
that
Examiner of
regardless of his
priority.
actual
It is also
proof
the burden
sustained
Chase had
by appellant that,
out
the
at
time
record, we
upon
un-
him in his testimonial
the
two-party
declaration
inter-
phase
merits of this
derstand that
ference,
seven-party
interference had
brought for-
decision is not
the examiner’s
yet
terminated and that the
been
issues
appears
here.
ad-
ward for contest
two-party
involved in
were
page
Avery’s
12 of
top of
mitted at
seven-party
not the
issues involved
us
this feature is
printed brief-before
that
that,
ixxterference, and
in
for
order
Friden
longer urged.
have
Chase to
contested
“Avery
relies
contention
now
case,
in
involved
instant
issues
estopped from
be held
Chase should
that
second interference
would have
form-
corresponding
receiving
-claims
that,
It is
urged
ined
event.
Chase
”*
* *
counts.
broixght
seven-party
forward
tlie
in-
further stated
said deci-
hoard
second
terference his
there
agreement
con-
that was
sion
challenged
par-
or any
Friden
of the other
Examiner of Interferences
clusion
(some
make
could
the counts
ties who
question
our de-
not), the
them could
Examiner
Chase, supra,
controlling
Re
cision
exactly
anyway—
what
do
done
did
appellee
estopped
therefore
interference.
declare the second
constituting
making the claims
from
“We think
doctrine of
before us.
counts
apply if the
announced would
above
issues
decision of the board
From such
properly
ixxvolved here could have been
appeal before us.
pellant took the
sxxggested
seven-party
and decided in the
only
appeal
In his reasons
issue
It seems to be
conceded
appellee
estoppel of
is that of
raised
been decided
could
constituting
counts,
the claims
make
declaration
of the second
question
the sole
before
us.
necessary. The
terference
declara-
case of
second interference
was the
In our
In re
expressed
opinion
procedure for
Chase,
supra, Office to
special
facts
exact issixes between these
get
involved
therein
approved
purpose
the doctrine
side
inapplicable
set at one
trial.
made
Austin,
of In re
to hold
having
cases
40
It seems anomalous
us
F.
C.C.P.A., Patents, 1202,
voluntarily
while the
them aside
seven-
17
re set
2d
C.C.P.A.,
going on,
21
Shimer,
Patents, party
F.2d
claiming appellee contends,
had not
to be
from
would be held
appli-
terminated.
which he claimed
his second
503 was
initiated
necessary
solution
view of our
record
action of the
lution,
of interference No.
503 was not
No.
tion of
that in
the Examiner
led in its
that in the case last
times vexatious
facts
reversed.”
ance
Board
Office
think it sufficient to
the least
cause
Wasserfallen
826],
der the
District of Columbia.
harmony
doctrine of
make less
*4
mony with
Appeals of
is
length concerning
of.
suggested
decisions of the Court
cussed in Re
announced
cation.
failure to
We think
Martin,
Appellant
“With reference to
“Appellant
applicable
think, however,
complete
ft
57,166,
apply,
Friden,
that
involved
we
should
Shimer,
and -that said
doctrine of
fact,
the doctrine of
particular
out
at
declared,
wish
troublesome, expensive,
Appeals affirming
think it
in certain
to decide whether
ft
applicable,
proceed
the time
had
had been
provoked by
estoppel
at
interference
conclusion,
and that this
in the case at bar contends
Re
App.D.C. 187,
to the facts
to weaken the
Shimer,
[54
Re
Primary
and other cases
other cases
the time
expedited
District of
clearly
seven-party
Martin, supra, was not
ft
litigation
but we shall
is
Shimer that the doctrine
rejecting the claims on
facts of the case at
App.D.C. 367,
argued
60,503
say
prevented
of the utmost
interference No.
interference
as
cited
terminated
respects
terminated
should
supra,
this contention
there were
ft
Examiner.
appears
we do not
of the declaration
that we-
announced
Friden but
the doctrine does
or avoided.
No.
Examiner.
the record was
court
at considerable
between Chase
the decision of
in the Patent
arising
the case of
Columbia,
at
force
interference,
the Court of
be,
ft
60,503
assume,
bar.
cases,
cited,
do not in
generally
No.
applica-
import-
298 F.
we dis-
of,
Chase;
special
find it
of the
disso-
some-
ft
it
mis-
har-
Un-
dis-
60,-
bar,
60,-
-the
We
nor
the'
be-
we
In as to
is,
nounced
assignee
mined; whereas,
appellant,
51,235 by
question
presentation
fore referred
estopped from presenting them as a
parties.
for another interference between the
an interference
thoritative as the laws of if within the limitation of rights jj: conduct. Those United al. cussing Office ‘‘* * * Congress, Office, invalid to which he was a terference at a time when the claims are not allowable in plications Court This ed, ting cause for admit on motion additional claims and clared, that aminer of here ent discretionary a tacit objection as tend time for is no Primary making the claims record in interference No. and that pellee in error in this clared interference No. dently No. from such cause for not 109. There is [*] It is not here claimed that rule 109 is' v. Appellee We for the powers Office, up 60,503 The practice, however, involved, them Marble, seems to [*] indication of has the power declared under rule waiver would ever have after the the rules of the Patent States » of said interference. Examiner Examiner had not declaration the District rules, applicants, upon by express now of the unreasonable. forward delay question continued for of contends having complied with rule create an intolerable situation of confusion motions under in because of his failure to by the the record the timeliness of the set- present in the record inadvertently rules, expiration view; rel. Horace Koechlin et the Patent such party. so far as the 109, upon to enact rules for its .Office, properly C.D. constituting could in a before us in are legislation given that ed in the interference at bar. After the that the of opinion that we practice Primary creating showing, is not here involv- prior 442, showing Columbia, necessarily they only sought are 60,503, appellee In. the case of many years, Congress itself, 57,166 they voluntarily before declare previously de- Primary Ex- Office of the motion. Office, its right to ex- interference just is, may. showing that, Office, are within Examiner; the Patent knowledge the counts affect 109 from declare another Supreme upon improvi- such an be powers. relieved such *8 of one in dis- as au- us 109 is bind- said: there in the were good Pat- the and ap- the Patent de- could ' appellee nor applications which would interfere with ence appellant’s application here Examiner of Interferences interference should have been must is not tion to dissolve decision ence No. Chase able casioned ence No. 109 in interference were, plications in interference. responding to the counts here involved No. plications applications be no parties to are same invention had been of rule expired may himself failure to rights, proceeding, have had to claims party It is called We conclude disclosing any right complying if, No. being party To hold be remembered ignore involved, other or further contest between appears had know favored, (cid:127) Office. No without period under reasonably after prosecution appellee by in true sought assignee 57,166 held terminated what issues he to assume that comply 60,503 an interference all of access 57,166 the case of In re true, the record before his failure to has lost where the motion rule even after such motion appellee’s application with the showing of them with interference disclosed in one because any showing had to excuse himself for not the motion to dissolve while declared, was reformed after our meet. one with it in an interference the doctrine of excuse for such failure. 109 when a certain reason of in his expired, appellant appellant’s application made when rule 109 of them the decision that, in said any any applications appellant Primary against rule, when interference declared, appellee estoppels .preclude 57,166, By to an interference neither the claims cor- interference application, period expired, when interfer- rights other restoring truth; respect thus Chase, of excuse or other interference; involving us, granted. in him, observance period a like mo- Examiner party, by unpatent- with rule interfer- interfer- relieving had no appellee pending involv- record but it supra. there might those had will thq ap ap oc- Chase, re our decision of In in the case complying with rule supra, mo- inter- any held where to resist has partes a right inter ference has the Patent applica- been declared any other appellee tion to add Office, estoppel against a will not lie interference. respect to that interference with counts con- lead to the These considerations claims that not have ad- could one, is a reasonable clusion that rule judicated in In other inasmuch as its reasonableness but court, words, in the of that view pursue this questioned we will only applied in such cases can be subject further. adjudicata. doctrine of res stated, we For the hereinbefore reasons highest re- We course entertain compelled feel to the conclusion to come court, and gard for the dis- of that views we case in error were agree reluctantly. The con- with it most Chase, considering supra, create embar- flict decisions No. voluntary declaration of rassing tribunals situation Examiner, 60,503 by followed Office, Patent are convinced 69,- No. of interference declaration the soundness decision in case of our opera- prevented a fact Shimer, expressly supra, of In re affirmed estoppel against tion of rule 109 as an Chase, supra, in the case of In re appellee herein. Brashares, again supra, in the of In re by appellee There is some contention ordinarily lie will that the here involved even for failure to than dis- for a different invention though a interference be neces- second application in- closed the first Chase or, words, sary; 57,166. Ap- volved is not restricted to the counts before us pellant contends that adjudicata. would ob- doctrine of res We invention as that directed to same if, opinion of the serve that Com- covered of interference No. the counts Patents, interests missioner 57,166, scope. only in differing therefrom public orderly procedure the decision of the Board served adherence Office would be better 60,503, it in interference No. is stated: expressed the Court to the views present “The issue counts of the are some- Appeals of of Columbia the District specific what more than the count case of Cellucotton Products International they issue of the earlier interference but Coe, course within supra, it is of Co. v. general relate to matter. the same so to power the commissioner on admitted that do read to avoid conflict amend 109 as application.” the earlier Chase decisions. regret of the utmost Avery application here also a matter involved is compelled feel to overrule our the same in that we that was involved Chase, supra. 57,166. In re Apparently decision the case of interference No. correctly fol- required theory division The Patent Office tribunals cited, case last separate lowed our involved dis- inventions, only tinct we reverse the Board and we do not think that and reverse, we feel called differences between the counts of the because effect, in the case of us and the our own decision interference before count Chase, However, judges supra. prevent interference No. should the In re *9 infallible, assuming and not of of human without courts are do, err, deciding they sometimes they that if the invention involved and when 57,166 separate they correct interference No. should hesitate to their distinct that from involved the inter- errors. bar, compliance ference at recapitulate, the issues To while here in bringing the invention here in- involved decided in not have been inter in could 57,166 would not interference have been 57,166, all of No. ference because obligatory. have made could not parties thereto counts, constituting the We that claims same are not unmindful the United case of Appeals in the States of for the existed Court District of situation has, Shimer, supra; case the original in that Columbia case of in the International Coe, terminated at App. Cellucotton had Products Co. v. sought to add Shimer other 869, expressly approved D.C. time that bar, appellee opinion are of the erroneous- counts, that the court case at ly apply had failed of doctrine claims that in that case. not terminated at the time the material one before us declared. The very Appellant in his has out point of in the two cases difference be the regards to elaborate brief he what in the case at the interference bar important original Chase of features Primary Ex voluntarily by the declared harmony of Case which he contends are out r aminer, the Shime Case while in courts with the decisions of this and declare refused to Examiner had change frankly urges this court point of one second points its former He out conclusion. herein, fully difference discussed we have publications, various evidenced point does not and we conclude that this cluding appearing in the articles Journal relieve as to distinguish so the two cases Society, which cites of the Patent Office appellee reason of failure from Advisory report (cid:127)the of the Patent Office 57,166 with proceed in interference No. Secretary of Com- Committee made to the 109. under rule the motion of this (448 267), merce the decisions O.G. Appeals of the court of the of Court that the foregoing from the It follows (now District the United of Columbia Appeals must be the Board District Court for the States reversed. Columbia), on the there is In the briefs of both great led to uncer- under Rule have question of considerable discussion of the prac- tainty in interference and confusion whether, be awarded tice. invention, will be entitled to to which view the considerations embracing the counts here involved. We alluded, it appellant' agree I consideration, given question no this important this case to the decision of may not be for that is a matter so-called question review the whole appeal. determined in this developed doctrine of which has An addition record the Patent 109 of in connection Rule certiorari, was made issued writ necessarily require a Office. This will appellee. The writ was history the de- consideration granted, appears and inasmuch as it that velopment the doctrine. proper and material such addition was Estoppels not favored the courts herein, the issues the costs of such addi they prevent proving because appellant. against will be assessed applied only very should be truth- and The decision of the Board of applied by principle elear cases. The is reversed. application dur- Chase Patent Office to the Reversed. parte is the out- ing its ex consideration was, as far growth of a doctrine which discover, able to first in- as I have been BLAND, Judge (dissenting). Associate century ago third voked a necessary for me to recite the Appeals of the District of Co- Court of proceed- facts involved this interference Wilder, App.D.C. lumbia Blackford v. majority since are stated in the held that the Wilder court are, opinion also stated entitled to the allowance was not parte ex Chase Case. application because the fact in an Appellant Avery’s claiming he was contentions here are prior present had lost in inter- record that which he makes clear ference, finally which interference had that the former Case been was erroneous- ly court. adjudicated decided and was there controlling facts which presumed appear in this record that all were not disclosed stated adjudicated orig- the former record. While it be matters could instant record said makes inal clear *10 estoppel adjudicated. The there certain which were not so was clear- facts clear in record, upon judicata. doctrine of thought ly it is the res the former not based that very differences between' the records doctrine is a old one and one the affords definitely justification clearly been any arriving at had and a which an- conclu- Supreme by from the that which the Court of the sion different court nounced parte case, in Independent in States Nesbit v. at unless arrived we United 746, 36 parties tween make counts. District, 12 S.Ct. who can 144 U.S. upon is estoppel case This misnamed (The last-cited based L.Ed. 562. premise party Wild- v. not in Blackford that did basis of the decision holding er, only Rule 109. This is of supra.) not some of the decisions of this but of court in detail much going into too Without Ap- some of the decisions of of the Court discussion, it way of citation peals Columbia, pred- of District of our of fair consideration to state a that jurisdiction. ecessor in this doctrines The by the Court subsequently decided cases obviously announced in these not cases are of Columbia District of judicata estoppel based either res or judicata res doctrine discloses by inequitable reason of conduct. Res of equita- kind only was extended but a not judicata applied has been where there was applied. latter The doctrine was also ble identity parties no either of the or issues one avoided where was to the effect that finality there no also where was had time a when he priority a test of at judgment, as as well in cases where was priority, claim speak to right impossible par- adjudicated to inequitable him claim to allow to equi- ticular issue The involved. so-called parte in which he proceeding an ex principle applied table in also priority had refused to claim and assert where there facts cases were no such opportunity to to when he do so. equitable to make the well-known doctrine But, instance, every early de- applicable. Outside these velopment of had to be the doctrine there decisions, there is no warrant in law for present. certain elements denying the first inventor because a pais was declared exist where to advantage oppor- he has not taken of an statement, by was or act one admission a tunity offered a Patent Office rule. parties inconsistent which priority, where the later claim of Wilder, supra, At the time Blackford v. statement, or made him admission act decided, no there was rule in the upon by opponent was relied to the applicant Office which an Patent entitled injury. any ele- If one these latter’s bring to his claims in an forward all exist, estoppel. there was ments did plication priority and submit them in con- a Recognizing import- force test. Now, it must be conceded that this decision, squarely upon ance based court Court judicata, settled doctrine of res gone District of Columbia have further adopted a rule —109—which questions applying these doctrines to com- applicant said substance that an parable to the at bar than one proceeding any jurisdiction. other courts in It has This, course, bring forward claims. appli- held substance that one’s application meant claims in the involved. cation has been in an interference with 1927), amended, (July, the rule was Later bring fails to another he forward an stating party may substitute therein, of claims assertion other owned him. estopped prosecution in his ex from only step short until then invention, claiming though even all applicant began holding that Office equita- doctrine of the elements of the true estopped obtaining his claims reason res ble bring them if he did not forward under present. Moreover, judicata are not rule, permission granted by the even Brashares, C.C.P.A., F.2d Re though the lacked the elements nec- Patents, 873, it was held to essary for either the doctrine only required interference was judicata inequitable res based ac- forward This was more than conduct. a distinct tually other claims was, extension of doctrine. as I am might any other which he in own, conclude, the being creation may say forced and we further obtaining patent, of a bar gone so far as that he court has hold under the neither warranted statute brings unless he forward will be principles the settled sanctioned nor of an the claims developed quickly practice From this though law. even all the holdings line started a cannot make the there was counts necessary being followed extended though it set now and even degree reinvestiga- call an issue for another interference such a aside be- *11 216 everyone question by tion of whole upon a treatment of each case its own patent jurisprudence. authority facts interested under the Commissioner of will Patents evolve a presently appear, For reasons which will proper procedure mitigating severity rule 116 of the Patent amended Office was practice adopted as heretofore in 1934. avoiding out, the dilemma above Ovaitt, In et White al. v. C.D. 1923 procedure may, evolved, which when be held that Commissioner Patents had cast into the form of a rule. party the senior which an committee, “Your long after and in- had been award dissolved without matter, tensive consideration of the priority, was barred from as thereafter therefore following arrived at con- serting broader claims reason of his clusions :— comply failure to with rule Capen, App.D.C. 342, 43 was relied party That “(1) general, where a for supporting authority. This court in tardy asserting interfering claim to. Alexanderson, Re 541, C.C.P.A., 21 subject-matter dates, particular or to Patents, 983, in a where inter facts should determining be considered in ference had been 'dissolved before there party whether to what is- extent priority, was a final award of had held that under default so that doctrine of es- party the senior claim from toppel However, applied. should having sought that which 'could to ob regard to the numerous factual variations tain the interference in which he was may encountered, question- it is engaged. able whether a rule of universal report Therefore, October in a safely can be laid down. Advisory Patent tary Committee to Secre- committee, although members being Commerce, supra, attention was general principles accord as to called to this following situation in the govern, which should no rec- language: ommendation as to this branch of the problem, in the absence of a solution that developed “The situation thus entirely satisfactory. feel to be may
practice lead into dilemma. a particular “(2) That in the case where- deny “(1) party participation To a an interference is terminated dissolution an interference when refuses he fails or priority award of a limit- without an rule to assert or reveal his claim within the ing the of the doctrine of es- provided, times and where his activities toppel properly be made. another, may constitute a bar result in priority an award in favor of an is- “Accordingly, your committee has al- patent suance of a to one who not the ready your ap- recommended received first inventor patent. who is not entitled proval of revision a of rule rule August. so revised went into effect “(2) participation admit To in an year regard [1934], of this With to. party (by interference a who is barred his estoppels arising out of cases other cate- own laches or failure with or- gories, your prepared committee is not to- derly procedure) receiving recommendations but still make final has. give pure right opposition, e., tois a i. the matter under consideration.” right opposition coupled a reads, new matter added to claim, is not and that sanctioned law. as follows: appear it would “While that the * * * “116. requires administration compliance law strict party by- regulations termination of the interference with the “The an, requiring him to assert dissolution under without or reveal claim prescribed permitted within time award of shall not disturb this- practice practice presumption, party enjoying the- —otherwise respect into degenerates senior to. chaos—nevertheless it status appear any subject-matter shall invariable forfeiture circumstances, deprived rights, regardless of claim such an not be sub- such, solely severe exceedingly ject-matter the doc- on the by.- consistent with the doctrines of was not added trine claim equity 109.” rests. It is believed under rule amendment
217 has the where- terference. If the Patent situation Office Now, a at last have rights right lawful to determine one’s un- by decides Office rule the Patent ap- adoption der the of the estoppel will be doctrine what circumstances right of it perfect the rule the to what has also no difference plied. It makes adopt promulgate and which inequitable conduct a rule would the courts think about they bring neces- inform inventors if not that did not the party or whether permitted their they claims doc- forward make exist the sary elements to rule to will be when order The Office apply. Patent trine claiming parte pro- the invention in an ex intolerable fast-growing away get from a ceeding. to persuaded assert has been situation of statement one at least rule that under Olson, In Severson F.2d v. 20 It estoppel applied. will no facts there be C.C.P.A., Patents, 946, elsewhere, and this majority rule that the suggested is now court said that it would not extend the so as make might amended be of equitable estoppel doctrine the doc- I take harmonize. of the courts decisions equitable estoppel trine akin to which has if mean that this to many times been (first announced in Mason get away from certain further wants to Hepburn, App.D.C. v. 86), I think application of results from undesired courts, court, especially this fail- estoppel by of virtue of the doctrine carefully very against guarded its exten- 109, the rule said under rule ure application act of sion. the doctrine de- modify changed so right nies the first inventor to claim copying requirement reference with that which he has invented. is based prompts the subject upon matter squarely equitable claims. considerations. if the action persua- observation me seems to there are more 116 consti- adoption rule calling Office sive reasons for a halt to the un- rule, adop- effective tutes valid warranted and unusual extension along line would rules applied further so-called doctrine of when de- accomplish purpose without the same reason Rule 109 than there was for effectiveness of desired stroying refusing Hepburn the Mason v. extend accomplish purposes for which particu- 109 to doctrine. It seems to me that the originally intended. suggest necessity it was at bar lar facts halting the unwarranted extension of the majority view It is the point. doctrine at this Chase, having failed case the instant claims certain forward The facts in the case at bar are unlike seven-party plication any- not the facts the books interference, irrespective the show- We out in where. this fact inventor, clearly first parte decision. Some seven-party Avery the irrespective of fact could not particular the counts. The issue first inventor and make be- he is not the admits appellant appellee patent tween the a valid at bar event could not have adjudicated could not have been matter Another involved, Chase should es- counts here the doctrine of res have to be declared. Unless doc- topped, because of not judicata based it obvious it does trine res judicata, because greatly (and I applica- not extended fear that has apply, because equitable es- to this been) strict doctrine it could no tion of the Avery parte Case, In the ex toppel, clearly has shown of case. because kind together however, to this fact we alluded that he cannot have the damage, admits applica- fact inventor, additional with the is the first patent that Chase seven-party interfer- tion involved reason that Chase failed for the here, which the ence was rule 109. let it Just charged bringing for- Patent Office has be observed that the made Moreover, we there called attention states that in the ex ward. no rule seven-parly while the fact that in- party to the prosecution of a going still on and while terference will be denied Chase, upon possible advantage he did not take still of was showing, to have second opportunity extended 109 and prior into the claims forward bring these moved *13 doctrine; topped is not discretion- Examiner, exercising his an extension while effect, or at least he it ary argues, evident- in that if power, for reasons up the him, set an extension it is such an extension as is ly appeared satisfactory to outgrowth the claims the natural of the doctrine and second interference and caused showing logical development Right of it. copied requiring to be without difficulty lies the clearly the first with the situation. Appellee or motion. was whole so By priority plausible easy argument somewhat it inventor contest of that no redeclared continue to stretch and extend the doc- time the same had at that or in remotely trine us. until it resemble is now before ceases adopted. fact, originally who the one I Interferences was the Examiner of think, estoppel. applied clearly I the doctrine hereinbefore shown. If opinion this court is of it should consideration, court, this After careful doctrine, being unpopular extend the Brashares, supra, Re where one, admittedly although a meritorious one applied, pointed the facts in out that proper cases, to extend should refuse analogous to those that case were not it to prior facts not found in decided parte the ex Case. which existed in Chase especially cases and it should do so when So, where the we have a case here those facts are such as make the very different from combined facts are so plication resting of the doctrine when those, the books that case in strictly equitable prin- adjudicata res the doc- if it is the desire not extend states, ciples inappropriate. majority The trine, every distinguished. other case can be precedent find therefor in our Cardozo, language of Mr. al- The Justice decisions, estoppel applied that the so-called question, though to a different addressed origin has its in his failure to Nitrogen Products Co. v. Norwegian my way Rule 109. To 350, States, 53 S.Ct. United U.S. thinking, Chase has violated no Patent aptly apply— 77 L.Ed. seem to brought He Office rule. could have for- down in this “The tokens of intention set ward, permissive rule of the opinion have a force combination Office, place Patent these claims at a any one of them alone.” is denied to time when he could not have had the issue [Page remembered that Let it be 360.] adjudicated. might resulted passed, the motion while declaration new interference. the discretion of the Patent still within exactly thing This is that was done. open case, upon up Office to Even if it conceded he has he violated priority showing, permit a trial on Rule 109 there is no mandate requir- in it particular issue between patent. a denial appellee. and the Let us a moment look majority opinion at court’s The states Long, decision in Re Primary right to declare 23 C.C. Examiner had no ' P.A., Patents, Long, during the second interference because when he pendency application, of his claiming did he knew that Chasé would not be al- lowed claims reason of the fact that the invention and he estopped. Estopped upon standing he was claims what had for this in allowed theory? trying Not because he to vention. The examiner denied the claims priority. Long’s prosecution avoid a contest of The inventions on the applications were so dissimilar the two estoppel for the reason'that he ground of Examiner that a presented priority contest b.elieved had not separate necessary interference was those he had than lost in claims broader Chase, admittedly it. declared first The the interference. was stated inventor, response came forward proposition to rest the los request apparently satis- ing pai;ty in an interference proceeding everyone concerned fied that he was the ordinarily cannot be claims awarded broad inventor in fact. first What there about those which were awarded to er than unfair, inequita- that is that is his conduct party. successful involved attempted he Has ble? evade a the interference was involved in in claims that he contest would have lost? original We held that Not at all. invention involved three- position improvement Appellant takes the interference was an party in this case holding with him invention disclosed and that a that Chase es- on the broad claim ing, m m approving ed in the interference action Office, apparent Rhodes, supra. in Re estopped. It was which he was patentable to the were claims case, however, “We know of no where took Day. We winner Evans the loser party losing in an inter- narrow claims position estoppel, if there was that the ference has been be- denied broad one, operate did not in favor cause present in an same failed *14 deci the board’s claiming it and reversed subject-matter interference where the ? When sion. about instant case the What patentable par- not any to one of the other Avery he could not conceded that ties, they, claiming im- where an damaged, patent not and is valid therefore provement invention, over the broad either equitable he invoke an how can by their disclaimed the broad invention or Case, supra, Long against ? In the clearly any conduct conceded that in event [page we said 462]: be regarded could not as its first in- ventor.” for the “In this court Solicitor the that, regardless of Patent contends Office In about a dozen court cases this equitable for not an whether or the basis had occasion to the review the that, exists, settled law it is the- Board of with reference to its 109, to appellant, moved unless apply or failure doctrine to claims to the broad to add arising alleged lack out of claimed, same be- matter now compliance provisions the inter- issue of broader than the 109. We have reversed board but their ference, is not to al- now entitled he applied twice where it the doctrine —In re application, and re- lowance in the instant Long, supra, Chase, supra. and In re If Rhodes, 80 F.2d In re largely lies wrong, the Chase Case decided 525, [816], (Patents) 23 C.C.P.A. Long Case must not to as the be distinctions points certain out Solicitor will, holdings law. The court case and the instant which exist between therefore, way all results be’one far as Case, contends that Rhodes but the doctrine in are concerned. Since material and that are not distinctions majority instant ex- case has holding of the Board wholly tended facts different from those for reasons not to the claims entitled case, it other it is not seen how can abundantly supported it is stated logically contended that the doctrine authorities. being degree is not such extended to is, least, say becoming the situation on fours with know of no case all “We me alarming. somewhat It seems to the facts or the the case at bar either in is that our decisions on this it obvious It would be needless principles involved. harmony with each question proposition authority for the that in to cite and, all deference due gradual has been a the Patent Office there majority, it would seem to views of the doctrine es- extension of so-called of wisdom to overrule other part phases it has been toppel. In some its only rather than of this court decisions courts, in others approved by the promised relief from which have ones application of the doctrine has been re- conditions. intolerable growing well-settled, however, is jected. fails to submit party to an make reference to I deem subject-matter interesting claimed important matter. another applications belonging in other involved or Court The United States Columbia, predecessor priority where our him such for a contest the District jurisdiction, adversary his subject-matter present claimed now in our adversaries, jurisdiction appellate afterwards barred under sec- exercises Statutes, 35 obtaining claims not so submitted or Revised U.S. 4915 of the upon to consider It is called issue of the 63. § inter- C.A. broader than claims subject matter as we are herewith furthermore has been held same ference. International duty only his Cellucotton for- concerned. Coe, App.D.C. 248, v. subj when' the Products Co. ect-matter matter ward such adversary, 869, gone to have the court seems by his that it is F.2d is claimed principle judi- of res subject- squarely to duty so when such to do back also application of clearly adversary disclosed doctrine cata matter is present failure The latter claimed. was our hold- of proceeding. Whether A; (Patents) 26 C.C.P. Du Pont court case of E. I. later Coe, App.D.C. De Nemours & Co. v. PARKER v. BALLANTINE. cite the did not Appeal No. 4026. Co. International Products Cellucotton Appeals. Court Customs and Patent Case, supra, reconsideration was a Jan. matter, knowing. way whole I have no Case, however, In the Du Pont nothing matter to indicate that the whole given renewed consideration in the International Cellucotton Products Co. was considered or dis- Case approved. *15 parte reasons For in the ex stated Case, supra, which will summarized be here,
more in detail I am convinced unjustified this wholly reversing court is the decision of the Board in this followed proceeding our in the Chase Case declined and apply estoppel. doctrine of Those may reasons be summarized as follows: unquestionably First. Chase is the first
inventor. Second. the in- is conceded
volved counts be would not valid Avery. has, issued to He there- fore, harmed. Third. The matter of terference is a different invention from disclosed in Chase’s the first interference and the issue could adjudicated not have been inter- ference. Mothershead, Washington, F. D. Fourth. second J. A. Hayward Brown, (T. Washington, C. properly declared Ex- C., counsel), appellant. D. for aminer. Both were offered their day Chase, upon, Harry Grover, in court and City when called G. of New York easily Davis, pri- (C. C., contest L. Washington, entered showed D. ority. Adams, He inequita- therefore is not in Ira Greenberg, A. S. G. J. J. Norton, attempting all position pri- City, ble evade New York of coun- ority sel), appellee. attempting contest later for to claim otherwise would have lost. GARRETT, Presiding Judge, Before BLAND, HATFIELD, LENROOT, having adjudi- Fifth. There been no JACKSON, Judges. Associate actually pre- the issue either cation sumptively in the first BLAND, Judge. Associate equitable estoppel none of elements of present, being warrant law appeal is an from the decision of interposing against a bar Board of United States patent. appellee’s obtaining a an interference proceeding Office in party Ballantine, senior between agree majority I cannot Parker, junior party appel- pellee, basis there is after lant. Primary Examiner exercise of his up subsequent discretion set second order that the interfer- discussion readily more ence. understood it this, state thought point at GARRETT, Presiding conclusion, Judge, in view our concurs decision foregoing dissenting opinion. issue determined whether sole