28 App. D.C. 65 | D.C. | 1906
delivered the opinion of the Court:
This case comes to us upon an appeal from the decision of the Commissioner of Patents awarding priority of invention to
“1. In a planter, a cultivator and a seed dropper, and a vertically movable bar capable of lifting both said cultivator and the •said dropper.
“2. A seed planter, comprising a seed dropping mechanism, a reciprocating standard carrying a furrow opener in front of the same, means for raising and lowering the said standard and furrow opener simultaneously, said means also operating to raise the seed dropping mechanism out of operative position.
“3. A seed planter provided with a reciprocating vertically adjustable standard, anti-friction means for guiding the same in its movement, and yet capable of exerting a pull upon the same, and means engaging the standard for raising and lowering it.
“4 A seed planter provided with a vertically movable seed dropping mechanism, a chute therefor, a soil preparing mechanism, a reciprocating standard carrying the same, a drawbar engaging said standard, and means for adjusting the standard vertically with respect to said drawbar.
“5. A seed planter provided with a reciprocating vertically' adjustable standard, anti-friction means for guiding the same in its movements, and means for raising and lowering the said' standard.
“6. A planter comprising a rigid frame, pivoted frames carried thereby, a seeder carried by one of said pivoted frames', covering means carried by the other pivoted frame and means for elevating one pivoted frame whereby the pivoted frame carrying the seeder will also be elevated for interrupting the operation of the seeder.
“1. In a seeding machine, the combination of a main frame supported on the carrying wheels, a supplemental frame pivoted to the main frame and extending rearwardly of such pivotal connection, a furrow opener, and a seed box and covering shovels adapted to be elevated when said supplementary frame is elevated, and a sweep supported in advance of said furrow opener and in lino therewith.
*68 “8. In a seed machine, the combination of a main frame, a supplementary frame pivotally connected therewith, and free to swing vertically therein, a furrow opener, a seed box adapted to be moved when the frame is swung upon its pivot, covering shovels carried by said supplementary frame, and a sweep arranged in advance of the furrow opener.”
The record discloses that Holsclaw, the senior party, filed his application September 10, 1903, while that of Sobey, the junior party, was not filed until June 22, 1904. The issues are claims made by Holsclaw and suggested by the Primary Examiner to Sobey, who filed an amendment to his application incorporated therein the suggested claims as claims 44 to 51 inclusive. In filing this amendment Sobey stated that he did so, “without prejudice to our right to make motion for dissolution of the interference, when declared, should careful search and study show that the proposed claims (1) are unpatentable for lack of novelty, or (2) raise no real conflict, as applied to the rival devices taken in conjunction with other inventions existing prior.”
The interference having been declared, and the preliminary statements filed and opened, it was found that Sobey had failed to overcome Holsclaw’s record date, so that the Examiner of Interferences, in conformity with the rules of the Patent Office thereto pertaining, notified the parties that, unless Sobey should show good and sufficient cause before a given date, judgment on the record would be rendered against him.
Thereupon Sobey moved to dissolve the interference upon the grounds, that no interference in fact existed, irregularity in its declaration which would preclude a proper determination of the question of priority, that the issues were unpatentable, and that Holsclaw had no right' to make the claims. The motion was referred to and heard by the Primary Examiner, who filed an opinion specifically passing upon each ground upon which the motion was based. He denied the motion save as to count 5, which he held to be unpatentable in view of a prior patent. From this decision an appeal was taken to the Commissioner of Patents upon ground stated in the latter’s opinion, which also
It will be noted that no appeal was taken from the Examiner’s decision holding the issues, save the fifth, to be patentable, and that Holsclaw had a right to make the claims. Neither the rules of the Patent Office, nor any section of the Revised Statutes, provide for, nor permit, such appeals. Allen v. United States, 26 App. D. C. 8.
The interference proceedings were thereupon continued by the Examiner of Interferences, who awarded priority of invention of all of the issues, save the one formerly declared unpatentable, to Holsclaw. Thereupon Sobey moved the Examiner of
The Interference Examiner, in denying the motion, said:
“The matters now set up as anticipating the issue were not called to the attention of the Examiner of Interferences before the decision on priority, and not until the limit of appeal from said decision had nearly expired. The authority of the Examiner to act upon these matters under the rule is therefore doubtful. However, no useful purpose would be accomplished by the grant of the present motion, since Sobey, in order to preserve his rights, must take his appeal on the question of priority to the Board of Examiners-in-Chief. He may, under the rule, direct the attention of the Examiners-in-Chief to the matters alleged to anticipate the issue, thus preventing useless delay.”
Appeal was then taken by Sobey to the Examiners-in-Chief from the Interference Examiner’s decision awarding priority to Holselaw. In his reasons of appeal he set forth that the Examiner of Interferences erred in awarding priority to Holselaw because the issues were unpatentable, and clearly so when construed to cover Sobey’s construction. He further urged that the Examiner erred in failing to direct the Commissioner’s attention, under Buie 126, to the unpatentability of the issues. At the time of taking this appeal he filed a petition asking them before any decision upon the question of priority to call the atten
The Examiners-in-Chief, after a hearing, rendered a decision holding that they did not have jurisdiction to consider any of the questions raised by the assignment of errors save that of priority. They said that the question of the patentability of the claims was res judicata for them at the hearing of the question of priority of invention, and that the Commissioner had settled the question of interference in fact.
In referring to the petition asking them to direct the attention of the Commissioner to the alleged unpatentability of the issues •as provided by Pule 126, they said:
“Pule 126 reads: ‘Examiner of Interference or the Examiners-in-Chief may, either before or in their decision on the question of priority, * * * direct the attention of the Commissioner * * * to any ground for rejection of the claims which are the counts of the issue.’ ”
It is not necessary to decide whether the rule authorized die Examiners-in-Chief to direct the attention of the Commissioner to their opinion on such a matter, and to refrain from deciding the question of priority of invention. It is enough to say that it is left to their discretion whether or not they will call the attention of the Commissioner to any such matter, and tmit their opinion should be certain and beyond doubt in order to enable them to so act.
We have considered the question tvhich we have been petitioned to consider, in view of the patents cited by Sobey to sustain his contention against the claim, and of the decision of the Principal Examiner, and decline to express the opinion that the counts of the issue are unpatentable.
Appeal was duly taken to the Commissioner of Patents, and at the same time he was petitioned to dissolve the interference because the issues were anticipated by the patents of the prior art, and because they could only be held patentable by reading into them features of construction not' found in Ilolsclaw’s application, but disclosed in Sobey’s. In passing it may be said
The Commissioner affirmed the decision of the Examiners-in-Chief awarding priority of invention to Holsclaw, and at the same time dismissed Sobey’s petition for reasons stated in his opinion deciding the question of priority.
The Commissioner, in reviewing the case, said: “It appears that the dates of invention alleged by Sobey in his preliminary statement are insufficient to overcome the case established for Holsclaw by the filing date of his application, and that Sobey can therefore make no contest upon the question of priority of invention. That he can make no further contest upon priority is conceded by Sobey, who admittedly took his appeal to the Examiners-in-Chief from the decision of the Examiner of Interferences upon priority of invention, and also the present appeal, for the sole purpose of attacking the patentability of the issue. The regular procedure for raising the question of patentability by a party in an interference proceeding is by motion under Hules 114 and 122. Such motion was made by Sobey, and his contention that the issues are not patentable was considered thereon by the Primary Examiner in connection with the same references upon which Sobey seeks to present this contention here. The Primary Examiner held upon this inter partes consideration, as he had previously held in the ex parte prosecution of the applications, that the issues were patentable. Well-established policy, expressed in Hule 124, denies the right of appeal from decisions affirming the patentability of claims. It would seem, in view of this policy and rule, and in view of Sobey’s preliminary statement, that Sobey’s opportunity to contest the right of Holsclaw to a patent upon the claims in-issue was at an end when this decision of the Primary Examiner appeared. However, Hule 12G provides that the Examiners-in-Chief may,
“ ‘We have considered the question which we have been petitioned to consider, in view of the patents cited by Sobey to sustain his contention against the claim, and of the decision of the Principal Examiner, and decline to express the opinion that the counts of the issue are unpatentable.’
“It is clear to my mind that this case is before me upon the single question of the priority of the parties with regard to the subject-matter of the issue, and that, Sobey having conceded that he is subsequent to Holselaw on the possession of this matter, there is nothing for me to do here but affirm the decision of the Examiners-in-Chief in favor of Holselaw. It is urged that there can be no proper decision upon priority of invention until the claims in controversy have been determined to be patentable. This contention does not, however, appear to have any application in the present case, for the claims in issue have been regularly determined to be patentable, and the determination was a final one, so far as the necessity for a basis for determination of priority is concerned.”
We have thus fully set forth the proceedings in the Patent Office because they show that the questions of patentability of the issues and of the proper construction to be given them were repeatedly called to the attention of the various tribunals and as fully considered as the rules governing the proceedings in that office permit. These rules are presumably made to conform to the patent statutes, have been in force for many year's, and have been found, in the main, to give satisfactory results. They show that the decision of the Primary Examiner, that the claims
In the appeal taken to this court from the decision of the Commissioner of Patents awarding priority of invention to Holsclaw it is asserted on behalf of Sobey that the following errors were committed: .
“1. In deciding priority of invention in favor of Wilford H. Holsclaw.
“2. In deciding upon the question of priority of invention without first determining and deciding that the subject-matter of the interference was a patentable subject-matter.
“3. In not dissolving the interference (a) because óf the lack of patentability in the subject-matter thereof, and (b) because no interference in fact exists between the parties.
“4. In refusing to consider or decide upon the patentability of the subject-matter of the interference.
“5. In refusing to permit counsel for William Sobey to be heard in support of the contention on behalf of Sobey that the subject-matter of the interference is not a patentable subject-matter.”
That the first assigned error is not well founded cannot be gainsaid, provided the issues set out a patentable invention and show rival claimants of it. Sobey failed to overcome Holsclaw’s record date, and, so failing, no award-of priority can be made in his favor.
The second alleged error does not seem to us well founded for the reason that the question of patentability had been affirmatively decided by the officer expressly authorized by law to decide that question, from whose favorable decision no right of direct appeal is given by the patent statutes, or the rules of the Patent Office, lawfully promulgated. The Primary Examiners, who are given statutory authority to decide questions of patentability, are under the supervision of the Commissioner; and it would seem to be not only his right, but his duty, to correct any manifest
This leaves for consideration the question raised by the third assignment of error. We are asked to reverse the Commissioner because he refused to dissolve the interference for the reason that the issues are not patentable, and because no interference in fact exists between the parties. In this connection, it becomes necessary to consider to what extent we are called upon, or bound, to revietv the action of the Patent Office tribunals upon these, or analogous, findings.
The question presented to us is not a new one. Unsuccessful parties to interferences have urged us to re-examine about every question that has been litigated in the Patent Office during the course of interference proceedings. It will be sufficient to refer to a few of the cases illustrating the view this court has taken of questions the same, and similar, to those here presented.
In Hisey v. Peters, 6 App. D. C. 68, where it was urged that the interference did not present a patentable invention, Chief Justice Alvey, delivering the opinion of the court, said: uThe question of patentability of the claim for invention was referred to and passed upon by the Primary Examiner in the Patent' Office, who is the expert as to the state of the art involved; and it was not until that examination was had and favorably reported that the interference was or could be declared. The appellant, making claim for an alleged patentable invention, is not to be heard to urge nonpatentability of his claim after it has been placed in interference with another claim. He is effectually estopped on that question by reason of his own affirmative as - sertion that his claim is patentable; and, if his own claim is patentable, that with which it would interfere may be equally
In Doyle v. McRoberts, 10 App. D. C. 445, Mr. Justice Hag ner, of the supreme court of the District of Columbia, sitting in the place of Chief Justice Alvey and delivering the opinion of the court, said: “In our opinion, if is not competent for this court, in an interference proceeding, to abandon the question of priority, and pass upon the patentability of the alleged invention. This was decided as far back as 18Y5 by the supreme court in general term, United States ex rel. Bigelow v. Thacher, 2 MacArth. 24, where the petitioner in interference asked for the vacation of the patent upon the ground that the inventor had abandoned his invention to public uses. In Hisey v. Peters, 6 App. D. C. 70, the identical motion interposed here was made, and was overruled upon the ground that the applicant was effectually estopped to dispute the patentability of the invention by reason of his own affirmative assertions that his claim was patentable. See also United States ex rel. Brodie v. Seymour, 25 Wash. L. Rep. 183. Rut if is insisted that, under the authority of Hill v. Wooster, 132 U. S. 694, 33 L. ed. 503, 10 Sup. Ct. Rep. 228, the Supreme Court has settled the competency of chis court to sustain this claim. That decision has no relevancy to a case like the present. Section 52 of the Patent Office act of July, 1870 (U. S. Rev. Stat. Sec. 4915 [U. S. Comp. Stat. 1901, p. 3392]), provides that, ‘whenever a patent or application is refused, either by the Commissioner of Patents, or by the supreme court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity, and the court, having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that
In Oliver v. Felbel, 20 App. D. C. 262, Mr. Justice Morris, speaking for tbe court, said: “In the sense of tbe patent law, there can be no interference unless there is patentable invention and there are rival claimants of it. Patentability of tbe invention or device is a necessary prerequisite to a declaration of interference; and the patentability of an invention, in controversy, except under some extraordinary circumstances, is not an open question before us.”
In that case there bad been “no final and definite adjudication of patentability.” The Examiners-in-Chief were of the opinion that the claim in issue was not patentable. Tbe Commissioner had not acted on tbe question of patentability thus called to bis attention, but had reserved it for the consideration of tbe Primary Examiner after tbe question of priority should be finally decided. It was held that, as tbe question of patent-ability bad not been finally decided, the cause as presented was in effect a moot cause. Notwithstanding this, tbe court assumed that tbe question of patentability bad been definitely decided, and expressed an opinion on tbe merits.
In Luger v. Browning, 21 App. D. C. 201, in connection with
In Allen v. United States, 26 App. D. C. 8, which came before us on appeal from a decision of the supreme court of the District of Columbia directing the issue of a writ, of mandamus
In Podlesak v. McInnerney, 26 App. D. C. 399, we remanded an interference to the Commissioner of Patents for further consideration of the question of identity of invention. We considered the case as being one out of the ordinary, and felt constrained, in view of certain matters called to our attention, and which apparently had not been considered by the Commissioner, to take such action. We said: “We find that the question of appellee’s right to make the claim has received the consideration of the Primary Examiner, of the Examiners-in-Chief, and of the Commissioner. Where a question such as this has been fully considered by them, and all have concurred in finding a party to an interference, has the right fi) make a claim which is the same as the count of the issue of an interference, their' concurrent finding should not be lightly disturbed, and will be ordinarily considered by this court as conclusive. In an' ex parte case the decision of a Primary Examiner that a party has a right to make a claim, is final, unless for good cause shown the Commissioner, under his supervisory powers, takes jurisdiction to review the question. It is generally left to courts in a suit brought after the issue of the patent, for infringement of a claim thus allowed, to determine whether the patentee ever had a right to make the claim. If, however, an interference, involving such claim, be instituted, the rules of the Patent Office provide for an examination by the Primary Examiner of the question of the right of either party to make the claim. If his decision be in the affirmative, the rules do not provide for an
In Parkes v. Lewis, ante, 1, we have again held that the question of patentability will not' ordinarily be reviewed in this court.
In so holding we must not be understood as deciding that there can be an interference without there being a patentable invention, or that, should we be satisfied that there was no patentable invention involved, we should malte an award of priority. It would be our manifest duty to remand an interference to the Commissioner of Patents, or, at least, call his attention to the fact, whenever it is shown that there is a bar to the issue of a patent to both parties to an interference. But, where the Primary Examiner has held claims to be patentable, and the Examiner of Interferences and the Examiners-in-Chief have omitted or declined to call the attention of the Commissioner of Patent® to the unpatentability of the issue of an interference, or where the Commissioner has declined to review the decision
It is, however, strenuously urged that the proceeding authorized by section 4915 of the Revised Statutes (U. S. Comp. Stat. 1901, p. 3392), which provides for relief by bill in equity where a patent has been finally refused, is sufficiently analogous to an appeal like the present to warrant, and even require, this court to consider, upon its own motion, the question of patent-ability. We cannot agree with this contention. The proceedings are quite different. One is a proceeding in equity, the other at' law. The proceeding under section 4915 will only be open to the parties to this interference when a patent shall finally be refused to one of them because he shall fail to prove that his inventive act was earlier than that of his successful adversary, or for any other reason. Then, and not till then, can he avail himself of the provision of the section, and not till then will the case of Hill v. Wooster, 132 U. S. 693, 33 L. ed. 502, 10 Sup. Ct. Rep. 228, be controlling.
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 one 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 case, by an orderly system of appeals provided by the statute, the action of the Commissioner of Patents may be reviewed on an ex parte appeal. It is only on such appeals that we can tie-
In cases such as the one at bar, where the patentability of the claims which are the issues of an interference has been attacked in the Patent Office, and alleged invalidity has been repeatedly called to the attention of its officers authorized and required by the statutes and rules to consider the subject, we think their conclusion should, except, perhaps, in extraordinary-cases, be held controlling upon us in interference cases where we are called upon to determine which of two or more parties first made the invention which they are claiming. Any doubt we may have should be resolved in favor of the correctness of the finding that there is a patentable invention involved in the interference. Especially so wheD the alleged invalidity is based upon the prior art.
We do not feel Avar ranted in disturbing the rulings of the Commissioner of Patents, and those of the subordinate tribunals which have considered this case, and we therefore affirm the decision of the Commissioner of Patents awárding priority of invention to Holsclaw.
Let this opinion, and the proceedings of the court in the premises, be certified to the Commissioner of Patents according to law. Affirmed.