an interference, he has only to take his own. If he does not take his own, his right inures to the public. It may well be considered that when an application which discloses and might claim an invention but does not claim it and one which both discloses and claims it are copending these are in fact conflicting applications and that when both of these applications have matured into patents there are in fact, conflicting patents, one of which represents the interest of the public, the public having succeeded to the right of the inventor who did not claim it. It is a reasonable interpretation of the intent of the statute in authorizing the fourth defense to suppose that it was enacted to provide for that case, among others.

The copending patent which discloses but does not claim the invention in controversy is a definite publication of its disclosure, with a definite assertion of right to patent protection on a certain stated portion of that disclosure, which involves an abandonment to the public by obvious logical implication of whatever right to patent protection may be embraced in that disclosure but omitted from the inventor's assertion of right, so far as he is capable of such abandonment. This abandonment to the public follows upon the establishment of legal right in the inventor by perfection of the invention disclosed, coupled with due proceedings required to obtain a patent. The disclosure in a patent is a unitary whole, all parts of which are related in some way to the subject-matter claimed. (See Drewson v. Hartje Mfg. Co., 131 Fed. Rep., 734, and Jackson Spring Co. v. Adler, post, 218; 246 O. G., 1032; 243 Fed. Rep., 386.) The analogy of the right of the public thus acquired to the right of the patentee to what is included in his assertion of his right seems to be perfect. Since the right of the patentee dates from the perfection of his invention, the right of the public should date from the same event. In this case, as well as in the case of a patent which claims the invention in controversy, the public does not need the consideration which it would receive for granting a patent on the invention in controversy. If one patent has been granted on a given invention, the grant of a second patent on the same invention would be a grant for which the public has received no valuable consideration. Similarly if the public has knowledge of a given invention through its disclosure in a patent which does not claim it and has succeeded to the right of the patentee who might have claimed it the grant of a patent claiming that invention would be a grant for which the public has received no valuable consideration; but the succession of the public to the right of the inventor is not perfected until a patent has been granted, because it depends upon the logical implication of abandonment, which does not occur until the patent has been granted and published. The public has only an inchoate right to an invention dis

closed but not claimed in a pending application, which may or may not be perfected. Such an application does not put the question of priority in issue on behalf of the inventor, and it cannot put that question in issue on behalf of the public, because the abandonment upon which the right of the public depends has not occurred. Therefore a pending application does not support the bar of prior invention unless it contains claims to the invention in controversy, when it puts the question of priority in issue as between rival inventors. Furthermore, not only the right of the public to an invention disclosed but not claimed in an application, but also the interest of the public in the defeat of a claim by another inventor to patent protection on that invention, whether claimed or not, fails to accrue until a patent is granted on that application. So long as knowledge of an invention disclosed in an application is not accessible to the public the interest of the public is served by the grant of a patent to another inventor covering that invention, in the same way as if there existed no knowledge of it by anyone other than the patentee. In that case the public receives the normal valuable consideration for the grant of a patent. For the same reason that accessibility of knowledge of the invention to the public is essential to the defense of anticipation it is essential to the defense of prior invention, although in the latter case it may be effective with reference to a dif ferent date.

But this reasoning is applicable only to a copending patent in which the invention in controversy or so much of it as the public may have become entitled to might have been claimed. In Miller v. Eagle Mfg. Co. (C. D., 1894, 147; 66 O. G., 845; 151 U. S., 186) the Supreme Court said:

The result of the foregoing and other authorities is that no patent can issue for an invention actually covered by a former patent, especially to the same patentee, although the terms of the claims may differ; that the second patent, although containing a broader claim, more generical in its character, than the specific claims contained in the prior patent, is also void; but that where the second patent covers matter described in the prior patent, essentially distinct and separable from the invention covered thereby, and claims made thereunder its validity may be sustained.

In the last class of cases it must distinctly appear that the invention covered by the later patent was a separate invention, distinctly different and independent from that covered by the first patent; in other words, it must be something substantially different from that comprehended in the first patent. It must consist in something more than a mere distinction of the breadth or scope of the claims of each patent.

I construe this decision as meaning that the claims in a valid second patent must be addressed to subject-matter of invention which is not germane to the claims in the first patent. So far as the tangible subject-matter of invention upon which the claims in the first patent are

founded includes what is not embraced in the claims in that patent the implication of abandonment to the public occurs; but so far as the first patent discloses subject-matter quite independent of that upon which its claims are founded that implication does not occur. To this extent I consider that the authorities sustain the proposition that an issue of priority can only be raised between conflicting cases cases conflicting when their claims pertain to common tangible subject matter of invention which may be conceived more or less generically or according to different points of view. I think that this view harmonizes with the general tenor of the decisions hereinafter discussed as bearing upon the question concerning conflicting claims.

ANALYSIS OF DECISIONS WHICH HOLD THAT A PATENT SUSTAINS THE DEFENSE OF ANTICIPATION BY PRIOR ART ONLY WHEN IT WAS GRANTED PRIOR TO THE DATE OF COMPLETION OF THE INVENTION IN CONTROVERSY.

It is held that the first branch of the third statutory defensethat it (the invention in suit) had been patented or described in some printed publication prior to his (the patentee of the patent in suit) supposed invention or discovery thereof

is sustained by a patent only when the date of its grant is prior to the date of invention by the patentee of the patent in suit. This is agreed to by all decisions pertinent to the topic. The following decisions state that rule, but go no further: Bates v. Coe (C. D., 1879, 365; 15 O. G., 337; 98 U. S., 31), so far as what it actually decided goes, as several subsequent decisions have interpreted it; Kelleher v. Darling (C. D., 1878, 381; 14 O. G., 673); Anderson v. Collins (122 Fed. Rep., 451); Eck v. Kutz (132 Fed. Rep., 758); Ajax Metal Co. v. Brady Brass Co. (155 Fed. Rep., 409); Union Typewriter Co. v. Smith & Bros. (173 Fed. Rep., 288); Gray Telephone Co. v. Baird Mfg. Co. (174 Fed. Rep., 417); Turner Brass Co. v. Appliance Co. (203 Fed. Rep., 1091); General Electric Co. v. Allis-Chalmers Co. (190 Fed. Rep., 165); Johns-Pratt Co. v. Freeman Co. (201 Fed. Rep., 356, and 204 Fed. Rep., 288); Vacuum Engineering Co. v. Dunn (209 Fed. Rep., 219); Alvord v. Smith & Watson Iron Works (216 Fed. Rep., 150); Goessling Box Co. v. Gumb (C. D., 1917, 346; 243 O. G., 241; 241 Fed. Rep., 674). Some, but not all, of these decisions turned on or involved in an essential way a question of pleading. That a copending patent is not a part of the prior art is stated in several of the decisions above cited and in Diamond Drill Co. v. Kelley Bros. (120 Fed. Rep., 282, and 123 Fed. Rep., 882); Sundh Co. v. Interborough Co. (198 Fed. Rep., 94); Thomson-Houston Co. v. Ohio Brass Co. (130 Fed. Rep., 542); Horton Co. v. White Lily Co. (C. D., 1914, 285; 208 O. G., 655; 213 Fed. Rep., 471), contrary to which, expressly or by implication, are ex parte Eddleblute (C. D., 1890, 124; 52 O. G., 751;

Mitchell, Com.); Millett & Reed v. Duell, supra; Drewson v. Hartje Co., supra; Electric Co. v. Westinghouse Co. (171 Fed. Rep., 83); Twentieth Century Co. v. Loew Co. (243 Fed. Rep., 373, especially 386), and Lemley v. Dobson-Evans, post, 223; 246 O. G., 1203; 243 Fed. Rep., 391). That

the filing of an application without evidence of open use affords no element of publicity.

and is for that reason of itself no complete proof of anticipation, is definitely held in Thomson-Houston Co. v. Ohio Brass Co., supra; General Electric Co. v. Allis-Chalmers Co., supra; Vacuum Engineering Co. v. Dunn, supra; Alvord v. Smith & Watson Iron Works, supra, and Sundh Co. v. Interborough Co., supra, in all of which the anticipatory effects of patents were passed upon, and in Brown v. Guild (6 O. G., 392; 23 Wall, 181); Northwestern Fire Extinguisher Co. v. Philadelphia Co. (6 O. G., 34); and Lyman Ventilating Co. v. Lalor (15 Fed. Cas., 1163), in which applications which had not matured into patents were considered.

From the foregoing authorities it appears that the weight of authority is to the effect that a patent does not show anticipation back of the date of its grant. Whenever, in consequence of pleading or otherwise, the deciding tribunal considers the real question to be decided to be that of anticipation, it decides that a patent is an anticipation only from the date of its grant, except, among the cases cited herein, in the Commissioner's decision in ex parte Eddleblute, in the decision in the Court of Appeals of the District of Columbia upon an application in Millett & Reed v. Duell, in the five cases decided in the sixth circuit, and in Hillard v. Fisher Co. (159 Fed. Rep., 439) by the court of appeals in the second circuit. The excepted decisions all regard the question to be decided as arising under the fourth statutory defense, but do not hold that that defense is not a defense of anticipation.

DECISIONS WHICH, IF ANY, HOLD THAT A COPENDING PATENT WHICH DISCLOSES BUT DOES NOT CLAIM THE INVENTION IN CONTROVERSY IS INSUFFICIENT TO SHOW PRIOR INVENTION.

There are some decisions concerning which it may be questioned whether they do not positively decide or at least contain dicta to the effect that a copending patent which does not claim the invention in controversy is insufficient to show prior invention. Most of the decisions pertinent to this whole subject say little or nothing about whether the patent relied upon to sustain the defense of prior invention does or does not claim the invention in controversy; but it cannot be doubted that a patent which does claim that invention would sustain that defense whenever the requisite associated facts appear.

The decision of the Supreme Court in Bates v. Coe, supra, actually decided only that a copending patent does not support the defense of anticipation; but it contains a discussion of copending patents which were cited, among others, against the patent in suit, as applicable with equal effect to both of the defenses of anticipation and of prior invention. A patent in order to sustain the defense of anticipation must be granted before the date of invention of the invention in controversy. The implication of the Court's mode of treating these patents is that the same must be true of a patent which would sustain the defense of prior invention; but this mode of treatment had reference to the patents before the Court in the case at bar, which did not disclose the same invention as that which was claimed in the patent in suit in the sense in which the two inventions could be involved in an issue of priority. This was held by the Court to be the fact, as it obviously was from the evidence considered. Those patents would have the same application to both defenses, and the position of the Court amounts to a dictum going as far as that, but no further.

In Howes v. McNeal (C. D., 1880, 372; 17 O. G., 799; 4 Fed. Rep., 151) the circuit court, deciding a motion to admit certain file wrappers in evidence, held as follows:

The object of introducing as evidence such file-wrappers is stated to be to show that the inventions described in the several patents were made at dates as early as the oaths to the specifications. That is not the proper way to show the reduction to practice and use of the inventions claimed to be prior, so as to invalidate the plaintiffs' patent. That must be shown by direct evidence of the construction and use of the machines.

Nothing from the Patent Office can be admitted in evidence of earlier dates than the patents. All such evidence would be hearsay and secondary. A patent is allowed by statute to speak as a public grant; but the preliminary papers are merely the declarations of third persons, not parties to this suit or connected with them in interest or title. The evidence is not competent.

This decision is directly against the admissibility of the file of the application to show the date of perfection of the invention disclosed in the patent granted thereon or for any other purpose. In view of the later or even some earlier decisions this decision is no proof of the law on points pertinent to the present inquiry because it would prove too much. It is contrary to many other decisions, among which may be particularly cited Barnes Automatic Sprinkler Co. v. Walworth Mfg. Co. (60 Fed. Rep., 605).

American Roll Paper Co. v. Weston (45 Fed. Rep., 686), although it cites Howes v. McNeal, supra, as the authority for its decision, only decides that three specified patents the disclosures in which differed from the invention of the patent in suit so much that, as the court held, they would not anticipate it, whatever their dates, failed to anticipate for the further reason that they were granted after the date of the application for the patent in suit. Apart from its cita