tors of the subject matter of said interference as defined in the above counts." [Italics supplied.] In the prayer of their complaint they asked the district court to decree that they are the first inventors of the subject matter of all counts. The case is one which comes clearly within the statute, and the district court had jurisdiction of it. Reversed.

[U. S. Court of Appeals for the District of Columbia"]

GEOPHYSICAL DEVELOPMENT CORPORATION, KRASNOW AND. CURTISS v. COE, COMMISSIONER OF PATENTS

No. 8,209. Decided June 7, 1943

Certiorari Denied October 11, 1943

556 O. G. 711; 136 F. (2d) 275
EVIDENCE.

1. INTERFERENCE-MOTION TO DISSOLVE

Where a reissue application of one Bender was included in an interference with an application of appellants, and appellants moved to dissolve as to Bender on the ground that his original failure to obtain claims corresponding with the interference counts was not the result of his inadvertence, accident, or mistake, but of his deliberate cancellation of all claims except those patented to him; and the Commissioner ordered that the motion be considered on the record in the Patent Office, but denied appellants' request to file interrogatories and take evidence in support of their contentions Held that "the action of the Commissioner * in following the long established practice and refusing to examine this question except on the records in his own office was ** neither arbitrary nor unreasonable."

2. SAME POWER OF COMMISSIONER TO PROVIDE FOR SETTLEMENT OF MATTERS NOT ANCILLARY TO PRIORITY.

Held that the Commissioner has full power to provide or not, and in such manner as he sees fit, for the settlement of matters not ancillary to priority in interference proceedings.

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

Mr. Lawrence Koenigsberger (Mr. Sol. Shappirio of counsel) for Geophysical Development Corporation, Krasnow and Curtiss.

Mr. W. W. Cochran (Mr. E. L. Reynolds of counsel) for the Commissioner of Patents.

Before GRONER, C. J., and EDGERTON and ARNOLD, A. J.

PER CURIAM:

The controversy here arises out of an interference proceeding in the Patent Office, instituted under the provisions of R. S. 4904,' to

135 U. S. C. 52. "Interferences; determination of priority; issue of patent. "Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct a board of three examiners of interferences to proceed to determine the question of priority of invention. And the Commissioner may issue a patent to the party who is adjudged the prior inventor."

determine priority of invention between parties claiming substantially the same invention. Appellants applied for a patent on a device for measuring radio activity. An interference was declared with the then pending application of one Neufeld, to which was subsequently added the later application of one Howell. The office sustained in part a motion to dissolve as to Howell. Before any further steps were taken one Bender filed an application for a reissue of a previous patent to include the same claims. The Office then included Bender in the interference. Thereupon appellants moved to dissolve as to Bender on the ground that his original failure to obtain claims corresponding with the interference counts was not the result of his inadvertence, accident, or mistake, but of his deliberate cancellation of all claims except those then patented to him. This, appellants say, barred Bender's right to renew the claims in a subsequent application. The Commissioner ordered that the motion be considered on the record in the Patent Office, but denied appellants' request to file interrogatories and take evidence in support of their contentions. To test this ruling appellants brought this suit in the District Court for an injunction to require the Commissioner to amend his decision so as to permit the filing of interrogatories and the taking of testimony. The Commissioner successfully moved to dismiss and this appeal followed.

The Commissioner insists, in support of his ruling, that the question of Bender's good faith is secondary to the determination of priority of invention, that proof of priority is essential to the granting of a patent, and that appellants were placed in interference for this sole purpose. Consequently, the Commissioner says, it is of no concern to appellants whether Bender in his original application deliberately cancelled his claims and thereby forfeited his rights, for that is a question the Office will deal with in its own good time, and the decision of which will neither help nor hurt appellants. For even if Bender is not entitled to make the claims, appellants are not entitled to a patent unless they establish priority.

[1] [2] Precisely this was decided by the Court of Customs and Patent Appeals in Ellis v. Maddox, 96 F. (2d) 308, 495 O. G. 483. There it was held that the Examiner properly refused to consider, on the motion of the junior party to an interference, whether the senior party, an applicant for a reissue patent, was estopped by his conceded abandonment of claims in his prior application. The ground of the decision was that the question was not one of priority, or one ancillary thereto, and hence not determinative of the rights of the junior party to the proceeding. Such questions, it is frequently said, are the concern alone of the public, to be considered ex parte by the Patent Office. Te Pas v. Geldhof (C. C. P. A.), 112 F. (2d) 800, 521 O. G. 523. We have similarly ruled in analogous

cases. Earles v. Gomber, 50 App. D. C. 389, 228 O. G. 207; Frost v. Chase, 37 App. D. C. 179, 169 O. G. 945, and Norling v. Hayes, 37 App. D. C. 169, 166 O. G. 1282.

In the light of these cases it must be considered that the Commissioner had full power to provide or not, and in such manner as he saw fit, for the settlement of such independent matters in interference proceedings. And this we recognize in Allen v. Lowry, 26 App. D. C. 17, 116 O. G. 2253, where we said:

*

We cannot emphasize too strongly that, in our opinion, the statutes relating to interferences only provide that they shall be instituted for the sole purpose of determining priority of invention * . The Commissioner of Patents, under the authority given to regulate the proceedings in the Patent Office, is clothed with power to regulate all interlocutory proceedings in interference cases by rules not inconsistent with law.

The present regulation is not inconsistent with law, for admittedly there is no statute governing the Commissioner's discretion, nor, in the circumstances here, is it either unreasonable or arbitrary. Hearings confined to record facts are common in all judicial and quasijudicial proceedings. From many points of view public interest might well be served if the Patent Office admitted testimony as to the invalidity of a patent application or the bad faith of the applicant in an interference proceeding, in order to conclude all controversial questions at one time. But where, as here, the issue is not one which appellants may raise of right, the question is for the Patent Office. rather than the Court. The Commissioner says that motions such as this, when based on affidavits or testimony, are consistently refused consideration. Appellants dispute this, but in all of the cases from the Patent Office which they cite the motions were on grounds generally held to be ancillary to the question of priority.

Certainly it is true that appellants, in order to establish their application, have the duty of showing both patentability and priority. And the order or method of doing this is clearly within the rule making powers of the Commissioner. Rule 95 provides that before an interference is declared it must be determined by the Patent Office that there is common patentable subject matter in the cases of the respective parties. Once the interference is declared there is left for determination therein only the question of priority.

The action of the Commissioner, therefore, in following the long established practice and refusing to examine this question except on the records in his own office was, we think, neither arbitrary nor unreasonable, and we are required to affirm the judgment. Affirmed.

'Code Fed. Reg., Title 37, Sec. 1.95: "Before the declaration of interference it must be determined that there is a common patentable subject matter in the cases of the respective parties. The issue must be clearly defined and be patentable to the respective parties, subject to the determination of the question of priority."

[U. S. Court of Appeals for the District of Columbia]

THE MATHIESON ALKALI WORKS, INC. v. LEO T. CROWLEY, ALIEN PROPERTY CUSTODIAN OF THE UNITED STATES

No. 8,220. Decided October 11, 1943

557 O. G. 405; 138 F. (2d) 281

1. INTERFERENCE-REDUCTION TO PRACTICE-CORROBORATION.

Application, as a matter of law, of the rule making visual observation the test of corroboration in matters of reduction to practice Held properly challenged by the district court.

"We have warned against the arbitrary or extreme use of a rule making visual observation the test of corroboration. Even in criminal cases, where life and liberty are at stake, corroboration may be established by circumstantial evidence. While such a rule would be convenient of application in the Patent Office, it cannot be permitted to excuse the exercise of discretion or absorb the administrative function."

3. SAME-SAME-SAME.

"Corroboration is not a fixed quantity. It varies with respect both to the evidence which constitutes it and the evidence which it is designed to corroborate. When a case is tried to a judge the requirement is that he shall, in the proper exercise of his judicial function, weigh carefully both the evidence to be corroborated and that which is offered in its support. If the first is conclusive in character, he may be satisfied with supporting evidence of less force; and vice versa."

4. SAME-SAME-SAME.

Where the inventor's testimony is by deposition and without cross examination Held that "the burden upon one who attempts corroboration is obviously much greater."

5. SAME-SAME-SAME.

"It is beside the point that the procedure of the Patent Office, and of the district court in section 4915 proceedings, permits, or even encourages, the use of such depositions. A procedural practice, designed for convenience, must be applied with due regard for its own limitations."

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

Mr. Louis D. Forward (Messrs. Clarence M. Fisher, Raymond F. Adams and George E. Faithfull of counsel) for The Mathieson Alkali Works, Inc.

Mr. William W. Fleming (Messrs. Edward M. Curran, A. Matt. Werner, George A. McNulty, and George Foulkes of counsel) for Leo T. Crowley, Alien Property Custodian of the United States.

Before SOPER, Circuit Judge, sitting by designation, and MILLER and EDGERTON, Associate Justices

MILLER, A. J.:

This is a patent interference case, involving a method of producing an alkali metal sulphide by reacting an alkali metal amalgam with an aqueous solution of the corresponding alkali metal polysulphide. Invention is conceded. Appellant is the assignee of George L. Cunning

ham, who filed his application on February 4, 1936. Appellee is the Alien Property Custodian, who claims through Luigi Achille, the assignee of Enzo Lanzetti, whose United States application was filed on April 15, 1936, and whose Italian application was filed on June 15, 1935. It is conceded that Cunningham discovered the method involved in the interference prior to June 15, 1935. The primary question of the case is whether Lanzetti or Cunningham is entitled to priority as of that date. The answer to this question turns on the further question whether Cunningham's contention that he had reduced his discovery to practice prior to June 15, 1935, was sufficiently corroborated.

[1] [2] The Patent Office held that the corroborating testimony was merely hearsay; that, as there was no other witness than Cunningham himself who actually saw the carrying out of his process at the time claimed for it, the corroboration was insufficient. The district court expressly avoided reaching this conclusion as a matter of law, but held, nevertheless, that the evidence was insufficient to sustain appellant's contention. We have warned against the arbitrary or extreme use of a rule making visual observation the test of corroboration. Even in criminal cases, where life and liberty are at stake, corroboration may be established by circumstantial evidence. While such a rule would be convenient of application in the Patent Office, it cannot be permitted to excuse the exercise of discretion or absorb the administrative function. The district court properly challenged its application as a matter of law.

3

[3] But we agree, also, with the conclusion of the district court that the evidence offered by appellant was insufficient to provide the corroboration which is required. Corroboration is not a fixed quantity." It varies with respect both to the evidence which constitutes it and the evidence which it is designed to corroborate. When a case is tried to a judge the requirement is that he shall, in the proper exercise of his judicial function, weigh carefully both the evidence to be corroborated and that which is offered in its support. If the first is conclusive in character, he may be satisfied with supporting evidence of less force; and vice versa.'

1 Miessner v. Hoschke, 76 U. S. App. D. C. 343, 345, 131 F. (2d) 865, 867, 545 O. G. 443 Ercoli v. United States, 76 U. S. App. D. C. 360, 364, 131 F. (2d) 354, 358.

7 Wigmore, Evidence (3d ed. 1940) § 2065a.

See Note, 34 Harv. L. Rev. 677; 7 Wigmore, Evidence (3d ed. 1940) §§ 2030, 2033 Gildersleeve v. Atkinson, 6 N. M. 250, 27 P. 477.

* Scheftel v. Hatch, 25 N. Y. S. 240, 241; Alexander v. Blackman, 26 App. D. C. 541, 121 O. G. 1979; People v. Galbraith, 66 Cal. App. 761, 764, 226 P. 983, 984; Yoder v. United States, 10 Cir., 71 F. (2d) 85, 89.

• See The Barbed Wire Patent, 143 U. S. 275, 284, 58 O. G. 1555; Commonwealth v. Bishop, 165 Mass. 148, 150, 42 N. E. 560, 561; Harvey v. United States, 2 Cir., 23 F. (2d) 561, 564, 566.

7 Orens v. Orens, 88 N. J. Eq. 29, 33, 102 A. 436, 438; Orcutt v. Orcutt, 94 N. J. Eq. 303, 119 A. 377. Cf. McCurdy v. State, 39 Okla. Cr. 310, 264 P. 925, 928 (Sufliciency of corroboration of testimony of accomplices is question for jury).