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output of the machines was discarded as so defective as not to be usable, and that the machine was commercially impracticable.

The court held that there is a clearly recognized distinction between inoperativeness and commercial impracticability, and proof that 80 per cent. of the product was commercially usable shows conclusively that the device was operative; and finding that there was no substantial dispute on the question of priority except so far as it depended on the point of operativeness, the award was in favor of Gordon and Redlin, affirming the Commissioner of Patents.

SUNDSTRAND vs. GUBELMANN (4 F. R. (2d) 166.)

By GEORGE E. TEW, LLB.

The July, 1925 issue of the Journal of the Patent Office Society, Vol. 7, Page 555, contains a brief report of this case. Some additional comment may be of interest.

Gubelmann copied the claims of the Sundstrand patent more than two years after the issue of the latter, and after decisions below the Commissioner awarded priority to Gubelmann. The two years rule announced by the Supreme Court in Chapman vs. Wintroath, 252 U. S. 126, was not advanced in the Patent Office, but was raised for the first time in the appeal to the Court of Appeals, D. C.

The majority of the Court held that the question was "jurisdictional" and that it could be raised at any time, and reversed the Commissioner. Acting Associate Justice Smith dissented.

It is not clear upon what basis the Court decided that the question was one of jurisdiction, in the ordinary meaning of that word, for plainly the Patent Office and the Court had jurisdiction of the parties and of the subject matter, in the interference proceeding. The rule stated in Chapman vs. Wintroath apparently does not involve any question of jurisdiction, unless it be meant that under conditions where the rule applies the Patent Office has not the power or authority to grant another

patent containing the claims in question, nor consequently to declare an interference involving said claims. In other words, the question is one of patentability or the existence of a bar to the claims.

But whether the question be jurisdictional or otherwise, the right to raise it for the first time on appeal is a question of some difficulty and interest. Under the Federal Equity Practice, by analogy to which the Patent Office operates, a question of jurisdiction, at least with respect to parties, prior to the Act of 1875, could be raised only by plea. By the Act of 1875, the right was given to raise it at any time, the intent being to prevent abuse of the Federal courts by the trial of causes of which they properly had no jurisdiction. In the present case, which seems to be a case not of jurisdiction but of the existence of a bar to the grant of a patent, the result is to give the rule in Chapman vs. Wintroath the same effect as a statutory bar.

Justice Smith, in his dissenting opinion, says that the rule is not a statutory bar and that "if two years was a statutory bar to the copying of claims of a subsequent patent, we might probably decide the case on the record."

The Commissioner of Patents, in his duty to the public, irrespective of any question of priority between the two parties, doubtless has the right to refuse to issue a patent to either if a statutory bar exists. But it may with reason be urged that the existence of an anticipating reference, discovered say during the progress of an interference, in as much a statutory bar as any condition arising from laches or estoppel, as in Chapman vs. Wintroath. But here we are confronted by the Rule that questions of patentability cannot be raised on appeal.

Questions of laches or estoppel may be relevant to the right of Gubelmann or any other similar party to a patent containing the claims in question, but this goes to merits rather than jurisdiction, except under an unusual meaning of that word. To raise that question for the first time on appeal to the Court creates a condition apparently in conflict with the reasons for the rules pro

hibiting such questions, or any questions outside of priority, in appeals in interference cases.

Probably it would not be contended that, granting the soundness of the rule in Chapman vs. Wintroath, the Commissioner or the Court of Appeals should not be without power or authority, in the interest of the public on which the rule is based, to apply and enforce that rule at any time, and a consideration of the interest of the public may have been the basis for what may be considered a departure from the ordinary rules of pleading and Appellate Practice.

The rule in Chapman vs. Wintroath is based on the two years rule established by R. S. 4886 etc., and hence may be considered as a judicial rule which by the present decision gives laches, equitable estoppel or interfering rights an effect equal to that of a statutory bar, not only with respect to its result but also with respect to the time at which it may be pleaded, and in the latter respect occupying a position apparently superior to some statutory bars, such for example as lack of novelty, which under Rules 122 and 130 require a motion for dissolution at an early stage in the case. Perhaps the maxim that the end justifies the means in the warrant for the apparent departure from the rules in analogous cases, but the reference to the question as a jurisdictional one and a decision on that ground is somewhat inexplicable; and there may be some interesting extensions of the principles involved, and enlargements of the extent to which the Court of Appeals D. C., in deciding interference cases, will go outside the question of priority.

OF GENERAL AND PERSONAL INTEREST.

Mr. Philip Subkow, a junior patent examiner in Division 31, resigned August 5, 1925. Mr. Subkow was appointed October 8, 1923, and has been examining Class 196, Mineral Oil. He is a graduate of Lehigh University

with the degrees of Ch. E. and M. S., and has had two years of law at George Washington University. It is understood that he is going to practice patent law here in Washington.

Mr. Forbes Silsby, a junior examiner in Div. 3, resigned June 30, 1925. Mr. Forbes was appointed July 26, 1922, from the District of Columbia, and has been examining Class 219, Electric Welding. He is a graduate of Lehigh University with the degree of Ch. E., and has had three years of law at George Washington University. He is going with the General Chemical Company, of New York City.

Mr. Elwood Hansmann, an assistant patent examiner in Division 21, resigned July 11, 1925. Mr. Hansmann was appointed June 22, 1922, from Washington, D. C.

Mr. Andrew K. Foulds, a junior patent examiner in Division 7, resigned August 24, 1925. Mr. Foulds was appointed Sept. 11, 1922, from New Jersey.

Mr. Robert R. Candor, an associate patent examiner in Division 25, resigned August 17, 1925. Mr. Candor was appointed July 26, 1917, from Illinois, and has been examining Gas Expansion, Class 183. He is a member of the Bar and a graduate of Wooster College, Wooster, Ohio. He is leaving to go with The General Motors Corporation in this City.

Mr. Karl B. Lutz, an assistant patent examiner, resigned August 19, 1925. Mr. Lutz was appointed Aug. 20, 1920, from Ohio.

Mr. T. R. Goldsborough, an assistant patent examiner, resigned August 15, 1925. Mr. Goldsborough was appointed December 5, 1921 from Ohio, and has been examining the class of Radio in Div. 51. He is a member of the Bar and a graduate of Georgetown University.

LAW COMMITTEE.

A Law Committee of the Patent Office Society has been organized, the membership thereof being given below. Many of the activities of the society involve legal problems, and there will be obvious advantages in having a Committee that can consider and advise upon these problems.

EMERSON STRINGHAM, President.

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In addition to committees on tennis, chess, and golf, the Patent Office Society now has a Bowling Committee. Those interested in bowling are requested to communicate with the chairman or with some other member of this committee.

EMERSON STRINGHAM, President.

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