Appellant seeks reversal of the District Court's judgment dismissing its complaint under Rev.Stat. § 4915 (1893), 35 U.S.C. § 63, 35 U.S.C.A. § 63 (1934), to authorize the Commissioner of Patents to issue a patent upon applicatiоn No. 749,596 made by its assignors.
The application related to improvement in complicated knitting machines. It was filed October 23, 1934. A previous application (No. 213,818), filed August 18, 1927, was rejected by the Patent Office for inoperativeness. This ruling was affirmed by the United States Court of Customs and Patent Appeals. In re Lawson, 1934,
The principal question, therefore, is whether for the sole purpose of supplying the necessary oath the second application may be regarded as a continuation or division of the first, though for all other purposes, including institution of this suit, it must be considered as a new and independent one. We think the Patent Office and the District Court were right in holding that this should not be allowed.
Under Section 4915, аn appeal from a decision of the Patent Office (Board of Appeals) to the Court of Customs and Patent Appeals precludes later maintenanсe of a bill in equity'upon the same application. 1 The remedies are alternative and mutually exclusive, though differing in that the equity suit affords an opportunity for introduction of new evidence which is lacking on the appeal. The remedy elected is conclusive of the issues raised and of those which might have been raised. 2 A рarty therefore by filing a second application cannot obtain a review of questions which were, or might have been, determined on a review relating to the first. 3
The appeal on the first application here determined that it does not disclose an operative device. That question therefore is foreсlosed as to any subsequent application which raises the same issues as the first or issues which might have been raised upon it. To be entitled to raise the question of оperativeness under the second application by bill in equity, as it seeks to do here, appellant must show that it is not identical with the first, but is a new and independent onе. For this purpose the accepted test is whether the second application makes disclosure additional to that of the first sufficient to constitute inventiоn. 4
Appellant has been unable to do this. In effect, it concedes that the disclosure of the second application over the first does not amount to invеntion, when it insists that the first disclosed an operative device and the second was a continuation or division of the first. It nowhere claims that the changes made in the sеcond, consisting largely of additional figures or drawings, constituted invention. One reason for this, of course, is that under such a claim it could not also assert the right to have thе benefit of the filing date of the first application, which it must have in order to escape the consequences of the intervening public use.
However, appellant seeks to avoid this difficulty by asserting that the first application was operative, could have been shown so by evidence it could not present on the аppeal but might have presented in an equity suit, and that it is entitled to present such evidence in this case. 5 Its theory seems to be that the second applicatiоn, though disclosing no invention over the first, still was sufficiently different to lay a foundation for a new appeal or suit in equity under Section 4915. The analogy appears to be to a pleading which sets forth a cause of action or a defense so defectively that it is demurrable, yet furnishes a basis for perfection by amendment which fоr some purposes at least, e. g., applying a statute of limitations, relates back to the filing of the original pleading.
The analogy is hardly applicable, since it is not contended that the second application here disclosed invention over the first. It is as if the pleading had been amended so that still no cause оr defense would be stated. In such a case the condition for *899 relating backward would not be fulfilled. The argument seeks in effect merely to circumvent the requirement that the application disclose invention over the first to entitle the applicant to further review.
That appellant seeks really to redetermine the question which the decision of the Court of Customs and Patent Appeals has concluded appears from its insistence that the trial court should have received the evidence it tendered to show that the first application disclosed an operative device. That is the foundation of its claim that it may rely upon the datе of that application as to public use. It is true that it seeks to limit the effect of the redetermination to this single purpose, but no reason is assigned to show that if this is рermissible for one purpose it may not be for others. The disclosure of the first application was either operable or inoperable. Whether the one or the other, it had effect as to public use as well as other requirements. Nothing in the statute indicates that a disclosure may be operable for one purpose and not for others. On the contrary, the patent laws contemplate that fulfillment of the various requirements shall be contemporaneous as of the date of the application, not disjunctively successive as of the dates of successive applications disclosing no inventive difference. Any other view would bring about a practical disruption of the patent system and circumvent both the remedial and substantive provisions 6 of the Act to the prejudice of the rights of оthers, including the public. 7 No authority has been cited to show that such a relaxation of the conditions for obtaining the patentee’s monopoly is permissible and we think the reasons against allowing it, including the clear implications of the decisions which have been cited, are conclusive.
Appellant’s difficulty may be cast in the form of a dilemma. If the second application discloses nothing inventive over the first, the appeal on the first has determined conclusively that it is inoperative, and relief by way of this suit is precluded. If it discloses new matter, public use within the statutory period cannot be denied under oath. It can make no difference that appellant might have filed a bill in equity to review the Patent Office’s decision on the first application and presented testimony in the suit which could not be receivеd on the appeal. “The saddest words of tongue or pen” cannot overcome the effect of its own, though perhaps mistaken, election of remеdies.
It is unnecessary to discuss the other contentions which were made, consisting in the main of arguments, in different guise, which we have considered.
The judgment is affirmed.
Notes
Contrary to the formerly prеvailing rule in effect when the authorities relied upon by appellant were decided, viz., Larson v. Crowther, 8 Cir., 1928,
In re Marconi, 1912,
In re Edison, 1908,
Cf. Remington Cash Register Co. v. National Cash Register Co., D.C.D.Conn. 1925,
Appellant says, in the brief: “The primary question raised by the instant appeal is whether the disclosure in the parent applicаtion Ser. No. 213,818 is sufficiently complete to teach those skilled in the art to which the invention pertains, how to operate a knitting machine to produce the dеsired product.”
In this case the exclusive effect of the election of remedies and the requirements as to public use.
The very fact that such rights may intervene is in itself strong reason for refusing to permit the tacking together of incidents of several applications differing as to time but not as to invention.