O. G., 228; 31 App. D. C., 612; Murphy v. Meissner, C. D., 1905, 592; 114 O. G., 1830; 24 App. D. C., 260; Stone v. Pupin, C. D., 1902, 550; 100 O. G., 1113; 19 App. D. C., 396; Podlesak v. McInnerney, C. D., 1906, 538; 120 O. G., 2127; 26. App. D. C., 399.) No such error appears in this case.

Creveling urges in his brief and argued at the bar that the Patent Office erred because it refused to consider the prior art when interpreting the claims of the issue. But the experts of that Office did not think it necessary to do so in order that they might understand the claims. With respect to the claims, the Examiners-in-Chief said:

If their meaning is clear and includes Jepson, no consideration of the prior art need be given. If, however, there is no point to the claims when read on Jepson, we do not understand that we are concluded from a consideration of the prior art.

They then found in effect that according to the normal meaning of the words used, the claims read on both Creveling and Jepson. In view of this, it cannot be correctly said that they erred in not considering the prior art. Complaint is made because the Commissioner on the suggestion of Jepson modified his ruling so as to conform it to the holdings of the lower tribunals without first granting a rehearing. If his judgment was right, and we think it was, this irregularity, if it be one, is not of sufficient importance to constitute reversible error.

The decision of the Commissioner of Patents is affirmed and priority is awarded to Jepson as to all the counts of the issue. Affirmed.

[Court of Appeals of the District of Columbia.]

UNITED STATES, ex rel. INTERNATIONAL MONEY MACHINE COMPANY, v. NEWTON.

Decided March 4, 1918.

256 O. G., 227; 47 App. D. C., 449.

1. MANDAMUS-DECLARING OF AN INTERFERENCE CANNOT BE CONTROLLED BY. It is well settled that the duty imposed upon the Commissioner of Patents by section 4904, Revised Statutes, (Comp. Stat., 1916, sec, 9449,) to declare an interference involves the exercise of his judgment upon the facts presented and cannot be controlled by mandamus. (Ewing v. United States, C. D., 1917, 409; 238 O. G., 983; 244 U. S., 1; 37 Sup. Ct. Rep., 494.) 2. SAME QUESTION OF RES ADJUDICATA NOT REVIEWED ON.

Where an interference had been dissolved and a subsequent interference was declared between the same applications, Held that the question whether the decision in the original interference is res adjudicata as to the second interference cannot be raised on a petition for mandamus. It

may be urged before the various tribunals of the Patent Office and on appeal to the Court of Appeals of the District of Columbia. (Gold v. Gold,

C. D., 1910, 269; 150 O. G., 570; 34 App. D. C., 229.)

Mr. John F. Robb for the appellant.

Mr. Theodore A. Hostetler for the appellee.

VAN ORSDEL, J.:

This appeal is from a judgment of the Supreme Court of the District of Columbia denying a motion of appellant, International Money Machine Company, relator below, for judgment, and dismissing its petition asking for a writ of mandamus against the respondent, Commissioner of Patents, to compel him to vacate certain proceedings in the Patent Office in connection with a redeclared interference.

It appears that an interference containing three counts was declared between an application of one White and others and an application of one Oviatt. Relator, the International Money Machine Company, is the owner of the White application and the junior party in the interference. After the preliminary statements had been filed, relator moved to dissolve the interference on the ground that neither party had a right to make the claims, and for the further reason that the counts were unpatentable over the prior art.

On hearing, the Law Examiner granted the motion for dissolution, holding that neither party had a right to make the counts of the issue, and also holding that count 1 was unpatentable over the prior art. From this decision, Oviatt appealed to the Board of Examiners-in-Chief, who affirmed the decision. No appeal was taken from the decision of the Board. The dissolution became final, and the applications were returned to the Primary Examiner for ex parte prosecution, which included rejection of the claims of the issue in accordance with the decision of the Board of Examiners-inChief. Oviatt thereafter amended certain of his claims and added others, all of which were held by the Primary Examiner to be patentable over the prior art; and, as he regarded them readable upon the White application, they were suggested to the latter and were made by him. The Commissioner of Patents, acting under the provisions of section 4904 of the Revised Statutes, declared the interference here in question.

Relator seeks, by writ of mandamus, to compel the Commissioner of Patents to vacate the order declaring the interference and all proceedings in respect of the alleged interfering subject-matter of the applications of relator and the party Oviatt subsequent to the dissolution of the original interference.

It is well settled that the duty imposed upon the Commissioner of Patents by section 4904, Revised Statutes, (Comp. Stat., 1916, sec.

9449), to declare an interference, involves the exercise of his judgment upon the facts presented, and cannot be controlled by mandamus. (Ewing v. United States, C. D., 1917, 409; 238 O. G., 983; 244 U. S., 1; 37 Sup. Ct. Rep., 494.) In that case, where it was sought by mandamus to compel the Commissioner to declare an interference, the Court said:

It is to be remembered that the law gives the Commissioner both initial and final power. It is he who is to cause the examination of an asserted invention or discovery and to judge of its utility and importance; it is he who is to judge (be of opinion) whether an application will interfere with a pending one; and it is he who, after an interference is declared and proceedings had, is the final arbiter of its only controversy, priority of invention.

66

The contentions of petitioner put these powers out of view, put out of view the fact that the so-called judgment of record" is, as the action of the Commissioner may be said to be, but a matter of administration.

But relator seeks to escape the general rule that the writ of mandamus will not issue to control the discretion of a public officer by invoking the doctrine of estoppel. It is insisted that the dissolution of the original interference is res adjudicata as to the present interference. It is unnecessary to consider the merits of this contention, since his position is not improved in so far as his right to relief by mandamus is concerned. The question of res adjudicata can be raised and preserved at all stages of the proceedings in the prosecution of the present interference. It may be availed of by relator in the various tribunals of the Patent Office, through which appeals in interference cases may be prosecuted, and finally in this court on appeal from the decision of the Commissioner of Patents. (Gold v. Gold, C. D., 1910, 269; 150 O. G., 570; 34 App. D. C., 229.)

It follows that relator's right to have the question of former adjudication finally decided by this court on appeal in the interference proceeding forecloses its right to substitute mandamus for the legal, statutory remedy thus provided.

The judgment is affirmed with costs.

Affirmed.

[Court of Appeals of the District of Columbia.]

IN RE MARTIN.

Decided December 2, 1918.

257 O. G., 408; 48 App. D. C., 187.

INTERFERENCE-ESTOPPEL.

Where in an interference involving the applications of M., L. and G., G., and D. judgment was rendered in favor of D. and thereafter a patent issued to G. covering subject-matter not shown or claimed in the application of D. or the application of M. and after the issuance of this patent M. copied cer

tain of these claims in an application other than the one involved in the interference, Held that he could not be refused these claims on the ground of estoppel.

Mr. Charles C. Bulkley for the appellant.

Mr. T. A. Hostetler for the Commissioner of Patents.

McCoy, J.:

The invention involved relates to the art of automatic telephony. Taking the statement of counsel for the Commissioner of Patents, the case before the court for decision is as follows:

This is an appeal from the decision of the Commissioner of Patents (rec., p. 268) affirming the rejection of 105 claims in appellant's application, twenty-one of which were copied from a patent to Goodrum, No. 1,156,475. The rejection is based on the ground of estoppel in view of a terminated interference in which an earlier application of the appellant Martin was involved.

Interference No. 27,232 involved an application of Goodrum, which eventuated into Patent No. 1,156,475, an application of Martin, other than the one here appealed, an application of Dyson, and a joint application of Lattig and Goodrum, the latter being substantially a duplicate of the sole application of Goodrum. Martin in his preliminary statement failed to overcome the filing date of the Lattig and Goodrum joint application, but judgment was not rendered against him as he obtained permission to submit evidence seeking to prove that the Lattig and Goodrum device was inoperative. Judgment in the interference was rendered in favor of Dyson.

After the termination of the Dyson interference the invention here in question was evidently considered to be the sole invention of Goodrum, as his application was amended, additional claims were inserted, and a patent issued, No. 1,156,475, October 12, 1915.

-Appellant has copied claims 1 to 21, inclusive, of this Goodrum patent and is seeking an interference with this patent. The Examiner held that the applicant (appellant) is estopped from making any of these claims on the ground that they should have been made by Martin during the interference by a motion under Rule 109 to include the present Martin application in the interference. The rejected claims are not supported by the disclosure of the Martin application involved in the Dyson interference nor by Dyson's disclosure.

The present application of Martin was filed subsequent to the Martin application involved in the interference, but long before that interference was declared. In the interference, therefore, Martin became aware of the fact that the applications of Goodrum, and Lattig and Goodrum, disclosd and claimed features which were not disclosed in the Martin application involved in the interference, but were dis

closed in the present Martin application. Martin did not amend his present application to embrace claims for such common subjectmatter in order to contest an interference at that time.

The interference so far as Martin is concerned was terminated at the expiration of the limit of appeal from the decision of the Examiner of Interferences in favor of Dyson, Martin taking no appeal. The claims of Martin's application have been rejected and he appeals.

The Examiner based his decision upon the ground that Martin was estopped by laches to make the claims of the present application because he failed to move under Rule 109 of the Patent Office to be allowed to amend and bring those claims into the Dyson interference, but that if there were no estoppel by reason of laches he was estopped by the judgment of priority in that interference. The Board of Examiners-in-Chief and the Commissioner placed their decision entirely on the ground of estoppel.

There was no judgment of priority in the Dyson interference in favor of Goodrum against Martin; consequently, there can be no estoppel by judgment.

Assuming that Martin should have moved under Rule 109 his failure to do so is not shown to have resulted in injury to any one; therefore, one of the elements necessary to an estoppel is absent.

The decision of the Commissioner of Patents is reversed, and the clerk is directed to certify these proceedings as by law required.

[Court of Appeals of the District of Columbia.]

BRIGGS v. COMMISSIONER OF PATENTS.

Decided November 4, 1918.

257 O. G., 648; 48 App. D. C., 175.

1. MANDAMUS-DISCRETIONARY ACTION OF THE COMMISSIONER OF PATENTS NOT CONTROLLABLE THEREBY.

While mandamus may be invoked to compel a court or officer to take cognizance of a case in which the jurisdiction of the subject-matter has been conferred by law, it will not lie to control the judgment or discretion of such a tribunal.

2. SAME

REDECLARATION OF AN INTERFERENCE-DISCRETIONARY ACTION. Where it was sought by mandamus to compel the Commissioner of Patents to reopen an interference, Held that the relief sought was not to require the Commissioner to do a mere ministerial act which the law requires him to perform, but to decide in a particular way a matter confided by law to his discretion and judgment.