29 App. D.C. 61 | D.C. | 1907
delivered the opinion of tho Court:
The first contention of the appellant is that the decision be reversed on the ground urged in his motion to dissolve the interference, namely, that the invention of the issue is not patentable.
The attitude of the appellant is a peculiar one. He holds a patent issued in 1899, which, among other references, he claims to be an anticipation of this invention. His present application
The effect of this estoppel is sought to be avoided on ■ the ground that the question of patentability is jurisdictional. The argument is that patentability is not a mere “collateral question aside from the main question of the interference,” but the essential foundation of the interference, without which it cannot be carried on; in other words, it is a jurisdictional fact which the court must find before it can proceed to adjudge priority. If this be true, the appellant is not estopped to raise the question, for his express consent could not confer jurisdiction. The same argument was met by the court in the opinion above quoted from, in these words following immediately thereafter: “Moreover, the rights of appeal in case of the refusal of a patent upon the ground of non-patentability of the claim, and refusal of a patent because of interference with a prior right of invention, aré distinct rights, and the latter does not involve the former. This is clearly indicated in the Kevised Statutes of the United States, sec. 4911 (U. S. Comp. Stat. 1901, p. 3391), and in sec. -9 of the act of Congress
In some cases since decided, it has been intimated that, under extraordinary circumstances, the question of patentability might be considered in an interference case, to prevent palpable injustice. But these expressions were not necessary to the determination of the cases; and in none since the organization of this court has the decision of the Commissioner been reversed upon any such ground.
In the latest case in which this question was discussed, it was said: “The decision that the issue is a patentable one, having been made in the Office and a patent isstred thereon to Geen [one of the parties in interference], although it is confessed by the Examiner of Interferences that The invention is an exceedingly limited one,’ is binding upon us on this appeal. Assuming, as we must, for the purposes of this case, that the original conclusion, arrived at, it appears, with considerable difficulty in the Office in passing upon Geen’s application to patent, was a sound one, the single question for our determination is the disputed claim of priority between the patentee and the later applicant.” Kreag v. Geen (Present Term), 28 App. D. C. 437.
In many other cases of doubtful patentability, in our unexpressed opinion, we have felt constrained to confine our consideration to the question of priority alone, for the reason that the statute does not give an appeal to this court from the decision of the Patent Commissioner affirming the patentability of a claimed invention. As was said by Mr. Justice Duel] in the recent case of Sobey v. Holsclaw, 28 App. D. C. 65: “In interferences we do not determine whether either party shall receive a patent. The question presented to us is, conceding that there is a patentable invention, which party was the first to invent or discover the same ? When an interference is returned to the Patent Office after we have decided the question of priority, it is within the power of the Commissioner of Patents to withhold a patent from the successful interferant. In such ease, by an orderly system of appeals provided by the statute,
Without reciting the rules of the Patent Office regulating the procedure in interferences, which are set out in the brief for the appellant, and assuming, for the purposes of the argument, that they are binding upon this court, we see nothing in them negativing the views expressed. They have never been so interpreted in the Patent Office. The question of patentability is passed upon by the Primary Examiner of the particular department in the first instance. Then only can an interference be declared with another allowed application for the same invention. When declared, the question of priority goes to the Examiner of Interferences, and thence to the Examiners-in-Ohief, the Commissioner, and finally to this court. If the question of patentability is raised by a motion to dissolve the interference, it is at once referred to the Primary Examiner, who gives a hearing and renders his decision. His decision is not appealable to the tribunals sitting in interference cases, but to the Commissioner in person. If the issue is held patentable the interference proceeds in the regular course on the issue of priority alone. This practice has been approved. Allen v. United States, 26 App. D. C. 8, 25; United States ex rel. Lowry v. Allen, 203 U. S. 476, 51 L. ed. 281, 27 Sup. Ct. Rep. 141.
If.it were true, then, that the patentability of the issue is a
It has become so much the practice, of late, to raise this question of patentability in interference cases, that we think it advisable to set it at rest, so far as this court may; trusting that if our judgment is erroneous it may be corrected by the court of last resort through some appropriate proceeding.
As regards the issue of priority, the burden upon the appellant, as the junior party, has been heavily increased by the unanimous decisions of the Patent Office tribunals.
The appellee, however, took no testimony, and is therefore confined to his record date, July 6, 1903, for his conception and reduction to practice. The appellant, Johnson, undertook to carry himself back of Mueser’s alleged conception, on June 1, 1902, by testimony tending to show the construction of bars answering the description of the issue in 1898. That he made bars that were used in concrete construction was fully proved; but these were held by all the tribunals of. the Office not to embody the issue.
In view of the prior state of the art, the invention was declared to be a narrow one, and was formulated on the descrip
The drawings accompanying the application show cylindrical rods, some with indentations and some with projections in various forms, as well as rectangular bars, illustrating the construction described. After describing these particularly he says: “In all these different forms of my invention it will be observed that the substantially continuous surface and contour of the bar is- preserved, while the surface is nevertheless provided with the numerous interruptions stated.”
In the claim occur these words: “The surface of which is provided with a large number of interruptions of its continuity, whereby it presents a substantially continuous but actually much interrupted surface. The issue adopts these words, inserting after “surface” the words “of all the sides of.”
“That limitation of the claim, viz., ‘the surface of all the sides of which is provided with a large number of interruptions of its continuity,’ is further qualified by the suggestion, ‘whereby it presents a substantially continuous but actually much interrupted surface.’ This phrase is regarded by Johnson as paradoxical, or self-contradictory. But it is not so at all. A. surface has not to be entirely free from interruptions of its continuity to be substantially continuous. Take Mueser’s round bar as shown in his first sheet of drawings. A blunt pencil can be draAvn on a straight line from end to end of it, on every side of it; can be drawn spirally around it, in a right-handed or left-handed turn; can be drawn peripherally and transversely around it zigzag-wise; and in any of said passages not encounter a single interruption. There is certainly a continuity of surface, and such a surface consistently also with a large number of interruptions of its continuity. Johnson also, by the truncation of two opposite corners of his bar, supplies the same sort of continuity of surface, and, remembering that his bars are to be made of indefinite length, he certainly provides the large number of interruptions. In fact it seems as if Mueser in hitting upon the phraseology of these counts had hit upon exactly the phraseology, if not indeed upon the only possible phraseology, to set out the characteristics common to both these devices.”
The terms of the issue were considered sufficiently accurate by all of the tribunals passing upon the question of priority. After quoting the description in Johnson’s application, the Examiner of Interferences, in construing the issue, said: “It is therefore necessary that the issize be construed to cover only structures in which, by reason of the arrangement of projections and spaces, the area of the projections shall be substantially equal to the area of the recesses cut by any transverse plane. The Office should not give so broad a construction to the terms of the issue as to enable it to include a structure which has been held to be patentably distinct therefrom.” Citing Breul v.
Tinder the construction given to the issue, we are compelled to agree with the tribunals below that Johnson’s constructions of 1898 do not embody the invention of the issue.
The projections upon one face of the sample bar, as shown in the plaster reproduction of a part used in the construction of the school building in St. Louis, do not register throughout with corresponding depressions in the adjacent face; nor are the corrugations upon the other sample bar arranged at all points so as to be in the same plane with substantially similar depressions. Johnson’s own testimony, which is recited in the decisions of the Examiner of Interferences and the Commissioner, and need not be repeated, shows that the bars used in the school building had only an approximate constant section, and that the relative positions of the corrugations on the different sides of the bar were altogether accidental in the process of rolling. He also admitted that the bar illustrated by figure 1 of his present application is an improvement upon the former bar. On this point, also, the Examiner of Interferences refers to the oath attached to Johnson’s present application, filed February 4, 1904, in which he says that the invention claimed had not been in public use for more than two years prior to that date; and which could not be true if it was embodied in his bars applied in building construction in 1898. As these bars, therefore, do not show the essential feature of the issue, namely, “substantially the same cross sectional area throughout its length,” they do not show the invention in controversy.
There being no other evidence tending to show that Johnson had the conception of the invention prior to filing his application, he has failed to antedate the conception of Mueser shown in his prior application.
The decision awarding priority to Mueser must therefore be affirmed. It is so ordered; and that this decision be affirmed to the Commissioner of Patents as required by law.
Affirmed.