"19. Bond and Russell, assignors to defendant The Pure Oil Company, are co-inventors of the subject matter of the single count here in issue irrespective of the disclaimer filed by Russell in the Patent Office and the disclaimer dated January 20, 1953. "20. Bond and Russell, as co-inventors, probably conceived the invention defined by the single count here in issue on or about January 17, 1944. "24. A man skilled in the art of treating gasoline with T. A. C. Report GPG-1 before him could deduce or derive from the information contained therein the invention defined by the single count in issue in this action. Conclusions of Law: "1. The invention defined by the single count here in issue is not patentable to Zublin (assignor to defendant Shell Development Company) or to Bond (assignor to defendant The Pure Oil Company) or to Bond and Russell in view of prior inventions and scientific publications, particularly T. A. C. Report GPG–1.” [1] Pure Oil says, in challenging Findings of Fact numbered 19 and 20, that a plaintiff in a civil action under Rev. Stat. § 4915 cannot succeed merely on the basis of defects in the inventorship of its adversary's application or patent. That proposition is correct, so far as it goes. But this does not mean that where an issue of priority of invention is raised as between parties before the court, the latter cannot properly decide the status of those parties and their assignors, both as to time of invention and as to the nature of the inventorship. In this case, the court was not deciding against Pure Oil because Russell and Bond were joint inventors, but because they were not the first inventors. Cauley was found to be the first inventor, and his assignee. was awarded judgment by reason of that priority. Accordingly, the court could properly enter Findings 19 and 20, though there may have been no necessity for so doing in view of its decision in favor of Cauley. As to Finding of Fact 24, Pure Oil argues that this finding, assuming it to be based on evidence, does not establish inventorship on the part of Cauley. "The fact that the GPG-1 report," it says, "might support the rejection of the claim to Pure or Shell is no basis for concluding that it supports the allowance of the claim to Socony," citing In re Stoll, 161 F.2d 241 (CCPA 1947). But the court did not base its finding of priority on the part of Cauley solely—or even substantially— on the GPG-1 report. Its opinion shows that it had other grounds for that conclusion. 111 F. Supp. at 201 et seq. We think those 3 Citing Christie v. Seybold, 55 Fed. 69, 78 (6th Cir. 1893); Cleveland Trust Co. v. Berry, 99 F. 2d 517, 521 (6th Cir. 1938); Smith v. Carter Carburetor Corp., 130 F. 2d 555, 560, (3d Cir. 1942); and Christensson v. Hogdal, 91 U. S. App. D. C. 251, 253–4, 199 F. 2å 402, 405 (1952). "The misjoinder or nonjoinder of joint inventors shall not invalidate a patent, if such error can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent. . .” 35 U. S. C. A. § 256 (Supp, 1953). grounds were sufficient. We think, too, that Finding 24 was ancillary to the matters before the court, and thus within its authority to enter. It also appears to be well grounded in the evidence. [2] As to Conclusion of Law 1, we likewise think that the court was within its authority. Zublin was assignor to Shell; Bond and Russell were assignors to Pure Oil. Shell and Pure Oil were before the court as parties litigant-Shell as a plaintiff, Pure Oil as defendant. Zublin, Bond and Russell were not technically parties. But it was to them that their assignees had to trace their rights. The nature and extent of their claimed rights had to be determined in order to reach a decision in the case. Under the doctrine of Hill v. Wooster, 132 U. S. 693 (1890), the court could not properly hold that a plaintiff under Rev. Stat. § 4915 (here, Zublin's assignee) was entitled to a patent unless it could make an affirmative finding that the claim was patentable. Likewise, if the court found the claim unpatentable, it could not grant the relief sought. A holding that the claim was unpatentable to Zublin was therefore a proper part of the decision by the court denying him (through his assignee) the requested relief. Is the situation different as far as concerns Bond and Russell, assignors to Pure Oil? They were in the position of defendants, not of plaintiffs. A strong argument can be made that they are situated differently from Zublin: that the court should not do more than decide the bare issue of priority, and not undertake to state that Bond and Russell had no patentable claim. Our decision in Christensson v. Hogdal, 91 U. S. App. D. C. 251, 199 F. 2d 402 (1952), is cited to us in this connection. [3] That case, however, is not controlling here. The Christensson case arose under a statute which permitted suits in the District of Columbia against distant parties only where "remedy is sought under section 63 [Rev. Stat. § 4915] *** without seeking other remedy ***."5 Suit was there brought solely in reliance on Rev. Stat. § 4915. We held that the complaint sought "other remedy" because it included a prayer seeking a declaration that the defendant's patent was void by reason of the fact that he had not complied with certain statutory provisions when he obtained it. We said that the relief asked the voiding of a patent-was sought on grounds "entirely independent of the validity of the plaintiff's application or the priority of his invention, the matters which may properly be urged under R. S. 4915." 91 U. S. App. D. C. at 253, 199 F.2d at 405. Our decision in Christensson, barring extraneous issues in suits brought solely under Rev. Stat. § 4915, does not mean that a court cannot decide every aspect of the issue of priority, once that issue is properly before it. Here we interpret Conclusion of Law 1 as being Formerly 35 U. S. C. § 72 (a). A comparable provision is now found in 35 U. S. C. A. § 146 (Supp. 1953). limited entirely to priority. It means, as we read it, that the claim is not patentable to Bond and Russell (and hence Pure Oil) because they were anticipated by "prior inventions and scientific publications, particularly T. A. C. Report GPG-1." Such a holding was within the court's authority to make, as part of its decision on the issue of priority between the parties. [4] For these reasons, the judgments of the District Court must be affirmed. Affirmed. [United States Court of Appeals, District of Columbia Circuit], TOBY B. HARPER, APPELLANT v. ROBERT C. WATSON, COMMISSIONER OF PATENTS, APPELLEE No. 11993. Decided June 17, 1954 684 O. G. 239; 214 F. 2d 280; 101 USPQ 480 PATENTABILITY-PARTICULAR SUBJECT MATTER-APPARATUS FOR Held that, in view of the teaching of the cited prior trict Court was not clearly in error in holding that patentable invention. APPEAL from the United States District Court Robert F. Davis (Ellsworth H. Mosher, of E. L. Reynolds (Joseph Schimmel, of cou missioner of Patents. Before EDGERTON, FAHY, PER CURIAM: Upon rejection by the filed an TICALLY the Dis do not define District of Columbia. for Toby B. Harper. for Robert C. Watson, Com WASHINGTON, Circuit Judges ent Office of his application for a patent 1 as amended. After a full hearing, by the court's fangs of fact and conclusions of law, the judgment appealed fro was entered dismissing the complaint. formerly Rev. in the District Court under 35 U. S. C. § 145, The invation is an apparatus for automatically dimming or lowering the eams of automobile headlights as one car approaches another traying in the opposite direction. It is comprised of a fresnel type Our conclusion in this regard would seem to be supported by a provision to be found in Section 135 of the Patent Act of 1952, to the effect that "A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved from the patent, and notice thereof shall be endorsed on copies of the patent thereafter distributed by the Patent Office." 35 U. S. C. A. § 135 (Supp. 1953). The quoted language would appear to be applicable to a suit of the present sort, though we need not pass on the point. It is enough to say that if a final judgment adverse to a defendant in a suit under Rev. Stat. § 4915 (now 35 U. S. C. A. § 145, 146) is to have the drastic effect prescribed by the quoted provision, it would certainly seem appropriate for the trial court to include in its conclusions of law a holding that the defendant's claim lacks priority. 1 Serial No. 194,674 filed Nov. 8, 1950. 328229-55-3 lens for collecting the light from approaching headlights, one or more photocells positioned behind the lens and surrounded by a collecting reflector, the purpose of the photocells being to convert the collected light into an electrical signal, and a relay placed in the usual headlight circuit arrangement to dim the headlights in response to the signal. The District Court found that the prior art includes the Gillespie patent 2 showing the combination of a lens mounted on the front of an automobile to receive light from the headlights of an approaching vehicle, with a photoelectric cell positioned to receive the light collected by the lens and through the photocell operating circuit automatically dimming the headlights of the car on which the device is mounted. It found further that a fresnel type lens, among other uses in the prior art, had been used in combination with a photoelectric cell to measure light intensity." In view of the foregoing, none of which is controverted, we cannot say the District Court was clearly in error in finding that the differences between the prior art and the subject matter described in appellant's claims are such that the latter would have been obvious to a person having ordinary skill in the art, that his structure combines or aggregates features or elements old in the prior art and defines no new or patentable combination, and that the claims are unpatentable. Affirmed. United States Court of Claims JAMES J. GEARON, MARY E. GEARON, AND MARY E. GEARON AS EXECUTRIX OF THE ESTATE OF EDWARD GEARON, DECEASED, V. THE UNITED STATES 684 O. G. 477; No. 159-53. Decided June 8, 1954 1. INFRINGEMENT UNCONTROVERTED EVIDENCE BY INVENTOR ACCEPTED AS PROVED. Held that an inventor's appraisal of his own invention in the form of sworn statements, unless challenged or rebutted by the defendant in an infringement action must be accepted as proved. 2. RULES OF PRACTICE HAVE THE EFFECT OF LAW UNLESS INCONSISTENT THEREWITH. Although applications and proceedings on applications are primarily governed by the provisions of the Revised Statutes, Held that "where these provisions do not cover a particular point, that point is governed by the rules of the Patent Office" and "every such rule, unless it is inconsistent with law, is as authoritative as the Revised Statutes." 3. SAME ELEMENTS OF COMPLETE APPLICATION-APPLICATION NOT ACCEPTED UNTIL COMPLETE. Held that an application for patent comprises (1) a written petition, (2) a written specification together with a claim or claims and a drawing where 2 No. 2,240,843, May 6, 1941. 3 First Addition, No. 46,869, to French Patent No. 788,385. Aug. 4, 1936. the nature of the case admits, (3) an oath, and (4) a filing fee, and an application is not given a filing date or taken up for examination until all of the enumerated parts have been filed. 4. PATENTS—INVALID UPON PROOF OF USE MORE THAN ONE YEAR PRIOR TO FILING COMPLETE APPLICATION IN PATENT OFFICE. Held that proof of use of the plaintiff's invention less than one year prior to the submission of specifications, drawings and filing fee to the Patent Office, but more than one year prior to completion of the application by the filing of a petition and oath, rendered the patent granted on the application unenforceable because of statutory bar. Dismissed. Walter F. Boye (Donald M, Reno and Smith, Risting & Smith of counsel) for plaintiff. Warren E. Burger, Assistant Attorney General, and Eugene R. Weisbender, for defendant. Before JONES, Chief Judge, and MADDEN, WHITAKER, LITTLETON, and JONES, Chief Judge, delivered the opinion of the court: Defendant's motion for summary judgment urges dismissal of the petition herein on the grounds that the patent on which the suit is based is void in view of a statutory bar. This will first be considered. The petition alleges that one of the plaintiffs, James J. Gearon, was the inventor of inflatable, collapsible, military pontoon bridges for which he was issued Letters Patent No. 2,423,832 on July 15, 1947, on an application filed by Gearon in the United States Patent Office December 21, 1942. As originally filed on April 20, 1953, the petition contained four counts. On May 20, 1953, the defendant filed a motion to dismiss counts II, III, and IV of the petition as not setting forth any cause of action over which the court has jurisdiction. This motion was sustained in an opinion of the court November 3, 1953, and these counts were dismissed. The remaining count, count I, is under the provision of the patent laws of the United States, now recodified as 28 U. S. C. 1948, which provides for suits in this court for the unlicensed use or manufacture by or for the United States of a patented invention. The petition sets forth certain facts substantiated by references to various publications as to the use and publication of the Gearon invention prior to the filing in the Patent Office of the application that materialized into the patent in suit. These are contained in count IV of the petition. Because of their pertinency to the present issue, we quote from the petition: *** that heeding the said proper and patriotic appeals, said James J. Gearon, inventor of said patent, submitted, or caused to be submitted, his invention, including drawings and specifications, for Inflatable, Collapsible Pontoon Bridges to the Engineering Procurement District of Chicago, Illinois, and |