sioner to issue the patent to them. That suit is pending in the District Court and is not before us. In a second suit, appellants seek to restrain the Commissioner from issuing the patent to Hoffman while the first suit is pending. The present appeal is from a judgment for the defendant in the second suit.

[1] The statute provides that the "question of priority of invention shall be determined by a board of patent interferences *** and the Commissioner may issue a patent to the applicant who is adjudged the prior inventor." 35 U.S.C. § 135. We think this means just what it says. We see nothing to suggest that applicants who, like these appellants, are adjudged not to be prior inventors, can require the Commissioner to withhold the patent while they sue for it under § 146.

[2] The policy of the statute is clear. The decision of the Board of Patent Interferences is presumably, though not conclusively, correct. If Hoffman, to whom the Board awarded priority, gets the patent, he gets no more than is presumably his. To withhold the patent from him for the benefit of applicants who presumably are not entitled to it would serve no useful purpose. If the appellants win their suit under § 146 their rights will be protected, even if the Commissioner has issued the patent to Hoffman in the meantime, for § 135 provides that a "final judgment adverse to a patentee*** shall constitute cancellation of*** the patent ***"

[3] Pursuant to In re Allen, 115 F. 2d 936, 28 CCPA 792, the Commissioner withholds patents while appeals from the Patent Office are pending in the Court of Customs and Patent Appeals. That decision and that practice do not concern us. Appellants' suit under § 146 "is de novo and not an appeal." Knutson v. Gallsworthy, 82 U.S. App. D.C. 304, 314, 164 F. 2d 497, 507. "It is an application to the court to set aside the action of one of the executive departments of the Government." Morgan v. Daniels, 153 U.S. 120, 124.

Affirmed.

BURGER, Circuit Judge (dissenting):

Under the holding of the Court of Customs and Patent Appeals in In re Allen, 28 CCPA (Patents), 115 F. 2d 936 (1940), the Commissioner of Patents has no jurisdiction to issue a patent to a winning party in an interference proceeding during the pendency of the loser's appeal to the CCPA. It is not a matter of discretion, and so the Commissioner conceded in the District Court, although he argues to the contrary here.

For purposes of the Commissioner's interim jurisdiction I can see no difference between an appeal to the CCPA under 35 U.S.C. § 141 and a suit for review in a District Court under 35 U.S.C. § 146. Before In re Allen but subsequently to Whipple v. Minor, 115 Fed. 117 (D.

Mass. 1883) (relied on here by the Commissioner), the act of 1927 had amended Rev. Stat. § 4915 (1875) so that an appeal to the CCPA or a bill in equity in the District Court were mutually exclusive remedies with identical time limitations. 44 Stat. 1336 (1927). These are provisions analogous in every material respect to present 35 U.S.C. §§ 141 and 146. Thus, although there have historically been differences between these two methods for reviewing a decision in an interference proceeding, the two routes are now procedurally the same and should therefore have the same effect upon the jurisdiction of the Commissioner.

The statute which the Commissioner contends compels him to issue the patent without delay, 35 U.S.C. § 135, had an exact counterpart in force when the CCPA decided In re Allen. Rev. Stat. § 4904, as amended, 53 Stat. 1212 (1939). This statute clearly makes no distinction between the two routes for review, nor does reason suggest why such distinction should be made.

I would therefore hold that the Commissioner of Patents does not have jurisdiction to issue a patent until after the termination of proceedings brought under 35 U.S.C. § 146.

[United States Court of Appeals, District of Columbia Circuit] PREFORMED LINE PRODUCTS COMPANY v. ROBERT C. WATSON, COMMISSIONER OF PATENTS

No. 15,270. Decided June 9, 1960

108 U.S. App. D.C. 95; 756 O.G. 571; 280 F. 2d 643; 125 USPQ 626

1. REVIEW BY THE U.S. DISTRICT COURT FOR THE DISTRICT OF COLUMBIA-JURISDICTION-RAISING AND DECIDING ISSUE OF PATENTABILITY VEL NON.

"Upon re-examination of the issue of the propriety of the District Court's action in raising and deciding the issue of patentability vel non, we conclude as we did in the prior appeal that such action was authorized in law."

2. PATENTABILITY-PARTICULAR SUBJECT MATTER “HELICALLY PREFORMED WIRE ENVELOPE AND METHODS OF USE."

Upon review of applications entitled "Helically Preformed Wire Envelope and Methods of Use," disclosing preformed helical (spiral) elements and certain kinds of tube-like metal structures produced from the helical elements, Held that "the findings of the District Court on the issue of patentability, both as to those claims in which it agreed with the Patent Office and also those where it ruled sua sponte, were justified."

3. SAME-SAME-SAME-INVENTION-OBVIOUSNESS-SIGNIFICANT ADVANCE.

In regard to method claims upon which the District Court made sua sponte findings of unpatentability over a patent issued to one Moxham, Held that "these methods, mainly concerning the assembling of the preformed helical elements either to form a hollow tube or a tube over a core, suggest no significant advance from what would be obvious to one skilled in the art upon the disclosure of Moxham."

4. REVIEW BY THE U.S. DISTRICT COURT FOR THE DISTRICT OF COLUMBIA-MOTION FOR NEW TRIAL-EVIDENCE-PATENTABILITY.

“*** the proffer of evidence submitted by appellant in his motion for new trial and affidavit in support thereof, did not in the circumstances require the court to grant a new trial. Aside from his proffer of the prosecutional history of the Bodendieck patent in the Patent Office, appellant offered only 'expert testimony,' unspecified as to source or content, to support his claim of patentability over Moxham. The possible relevance of the Bodendieck history was not shown and the proffer of expert testimony was in terms too general to require the grant of a new trial."

5. APPEAL TO U.S. COURT OF APPEALS, DISTRICT OF COLUMBIA CIRCUIT-DISTRICT COURT'S JUDGMENT REINSTATED MOTION FOR NEW TRIAL.

Where, in dismissing on March 13, 1957, appellant's complaint under 35 U.S.C. 145, the District Court, as a second or alternative holding, had held that all of appellant's claims before it on the merits lacked the requisite novelty over the teaching of the prior art; and where the Court of Appeals, on remand of the case on a previous appeal (Preformed Line Prods. Co. v. Watson, 103 U.S. App. D.C. 286, 257 F. 2d 644, cert, denied, 358 U.S. 945), had ordered that the District Court's judgment be conditionally vacated "in the interest of justice," with permission given to appellant to apply within sixty days for a new trial "based on a proffer of evidence on the issue of patentability," since the second or alternative holding of nonpatentability was not framed as an issue before the District Court at the outset of the proceeding; and where appellant moved within the proper time for a new trial in the District Court and that motion was denied, Held that the "order of the District Court denying appellant's motion for a new trial is affirmed, and the judgment entered by the District Court in this cause on March 13, 1957, is reinstated."

APPEAL from the United States District Court for the District of Columbia.

Patrick H. Hume, with whom Messrs. C. Willard Hayes and George M. Sirilla were on the brief, for Preformed Line Products Company.

Clarence W. Moore (George C. Roeming, of counsel) for Robert C. Watson, Commissioner of Patents.

Before PRETTYMAN, Chief Judge, and BAZELON and FAHY, Circuit Judges FAHY, Circuit Judge:

This is an appeal from an order of the District Court denying appellant's motion for a new trial after our remand of the case on a previous appeal. Preformed Line Prods. Co. v. Watson, 103 U.S. App. D.C. 286, 257 F. 2d 664, cert. denied, 358 U.S. 945. We then vacated conditionally the judgment of the District Court of March 13, 1957, dismissing appellant's complaint under 35 U.S.C. § 145 (1958), which had sought issuance of a patent.

In the former case the District Court had rejected appellant's claim on two alternative grounds: first, it agreed with the Patent Office in holding that certain of appellant's claims were barred because of res judicata growing out of various proceedings in the Patent Office,1 and

1 Specifically the holding was that in the absence of a perfected appeal to the Court of Customs and Patent Appeals, the non-vacated decision of the Board of Interference Examiners adverse to appellant was a final judgment as to claims involved in the interference proceedings and therefore res judicata.

that the other claims were barred because of lack of novelty; second, it held that all the claims before the court on the merits lacked the requisite novelty over the teaching of the prior art. Since, however, the second or alternative holding of nonpatentability was not framed as an issue before the court at the outset of the proceeding, on remand of the case we ordered that the District Court's judgment be conditionally vacated "in the interest of justice," with permission given to appellant to apply within sixty days for a new trial "based on a proffer of evidence on the issue of patentability." After unsuccessful petitions for rehearing in this court and certiorari in the Supreme Court appellant moved within the proper time for a new trial in the District Court and that motion was denied.

Involved are applications 2 for a patent entitled "Helically Preformed Wire Envelope and Methods of Use." The applications disclose preformed helical (spiral) elements and certain kinds of tubelike metal structures which are produced from these helical elements. In various combinations and lengths depending on their purpose these preformed helices are used for the reinforcement, splicing, armoring and deadending of electrical transmission lines and other wires and cables.

The prior art upon which the District Court primarily relied in rejecting all of appellant's claims on the merits was a patent issued to one Moxham in 1886. That patent discloses the same basic helically preformed element as found in appellant's applications and a plurality of these preformed elements indefinite in length which could be useful as a traction cable for cable railways. In another form of the Moxham patent helically preformed elements of the same diameter and pitch could be assembled to form a hollow flexible tube.

[1] Upon re-examination of the issue of the propriety of the District Court's action in raising and deciding the issue of patentability vel non, we conclude as we did in the prior appeal that such action was authorized in law. Preformed Line Prods. Co. v. Watson, 103 U.S. App. D.C. at 288, 257 F. 2d at 666 (footnote 2 and cases therein cited). [2] We think, moreover, that the findings of the District Court on the issue of patentability, both as to those claims in which it agreed with the Patent Office and also those where it ruled sua sponte, were justified. Differences appellant claims between the disclosures of the two patents are differences only of degree and use which would be obvious from Moxham to one having ordinary skill in the art. [3] For instance, the claims upon which the District Court made sua sponte findings of unpatentability over Moxham were so-called "method claims." But these methods, mainly concerning the assembling of the

Two applications are involved. Serial No. 698,312 and Serial No. 2,200. The latter is a continuation-in-part of the former.

preformed helical elements either to form a hollow tube or a tube over a core, suggest no significant advance from what would be obvious to one skilled in the art upon the disclosure of Moxham.

[4] Finally, the proffer of evidence submitted by appellant in his motion for new trial and affidavit in support thereof, did not in the circumstances require the court to grant a new trial. Aside from his proffer of the prosecutional history of the Bodendieck patent in the Patent Office, appellant offered only "expert testimony," unspecified as to source or content, to support his claim of patentability over Moxham. The possible relevance of the Bodendieck history was not shown and the proffer of expert testimony was in terms too general to require the grant of a new trial.

Since we find no error in the holding of the District Court on the issue of patentability over the prior art, and since all of appellant's claims on the merits were rejected by the District Court on the basis of the prior art, we need not rule on other questions raised.

[5] The order of the District Court denying appellant's motion for a new trial is affirmed, and the judgment entered by the District Court in this cause on March 13, 1957, is reinstated.

It is so ordered.

[United States Court of Appeals, District of Columbia Circuit] ROBERT C. WATSON, COMMISSIONER OF PATENTS v. CIRCUS FOODS, INC., AND USTCO PRODUCTS CORPORATION

No. 14,994. Decided February 25, 1960

107 U.S. App. D.C. 229; 757 O.G. 769; 275 F. 2d 893; 124 USPQ 358 TRADEMARK-REGISTRABILITY.

The judgment of the District Court authorizing the Commissioner of Patents to register appellant's trademark as set forth in its application affirmed; and the Commissioner's contentions that the application showed false date of first use of the trademark and that the representations therein of use on the designated products were not supported by the facts, rejected.

APPEAL from the United States District Court for the District of Columbia. Affirmed.

Clarence W. Moore (George C. Roeming, of counsel) for Robert C. Watson, Commissioner of Patents.

Henry Gifford Hardy, with whom William E. Rollow was on the brief, for Circut Foods, Inc., and Ustco Products Corporation.

Before WILBUR K. MILLER, BAZELON, and WASHINGTON, Circuit Judges PER CURIAM:

The Commissioner of Patents appeals from a judgment of the United States District Court which held that Circus Foods, Inc., is

With reference to certain of appellant's claims an interference was declared in the Patent Office between appellant's applications and that of one Bodendieck.