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defined by the involved counts, and that the Board of Interference Examiners was without authority to render a judgment of priority in favor of appellee, the junior party.

As pointed out by counsel for appellant in their brief, a patent is not surrendered, nor is the subject matter claimed therein relinquished, upon the filing of a reissue application by the patentee. An application for a reissue is accompanied by a mere offer to surrender the original patent in the event the reissue application is allowed and the patent reissued. However, if the reissue application is not allowed, or if it is abandoned, the original patent is not surrendered, nor is the subject matter of the claims therein relinquished. See section 4916 of the Revised Statutes (U. S. C. Title 35, section 64); rule 91 of the Rules of Practice in the United States Patent Office; Allen v. Culp, 166 U. S. E01, 504; and McCormick Harvesting Machine Co. v. Aultman, 169 U. S. 606, 612.

[2] There are two statutory methods by which a patentee may disclaim subject matter covered by the claims of his patent, which claims are involved in an interference; namely, first, by securing a reissue of his patent in accordance with the provisions of section 4916 of the Revised Statutes, supra, and rules 85 to 92, inclusive, of the Rules of Practice in the United States Patent Office without including in such reissued patent claims to the subject matter involved in the interference, in which event the interference should be dissolved (Lattig v. Dean, 25 App. D. C. 591); and, second, by the patentee or his assignee filing a written disclaimer in the Patent Office in accordance with the provisions of section 4917 of the Revised Statutes (U. S. C. Title 35, section 65) and rule 181 of the Rules of Practice in the United States Patent Office, in which event the interference should be dissolved. See Moore and McKee v. Bradley v. Doering, Jr., 1912 C. D. 205; Maxfield v. Waters, 47 U. S. P. Q. 280; Stein and Peters, Jr. v. Cunningham, 47 U. S. P. Q. 281.

[3] A statutory disclaimer, under rule 181, supra, must be in writing, must be signed by the patentee or his assignee, must be attested by one or more witnesses, and must be accompanied by a filing fee of $10. As no disclaimer was filed by appellant in accordance with rule 181, supra, and as all of the claims in appellant's reissue application were under rejection at the time of the board's decision, it is obvious that the patented claims involved as counts in the interference were not relinquished or disclaimed in accordance with either of the hereinbefore mentioned statutory methods.

[4] Rule 107 of the Rules of Practice in the United States Patent Office provides that an applicant or a patentee may avoid an interference in which he is involved by filing "a written disclaimer or concession of priority, or abandonment of the invention, signed by the

inventor in person with the written consent of the assignee when there has been an assignment. Upon the filing of such an instrument by any party, judgment shall be rendered against him."

Rule 125 of the Patent Office rules provides that

After an interference is finally declared it will not, except as herein otherwise provided, be determined without judgment of priority founded either upon the evidence, or upon a written concession of priority, or upon a written disclaimer of the invention, or upon a written declaration of abandonment of the invention, signed by the inventor himself (and by the assignee, if any).

Appellant did not file a "written disclaimer or concession of priority, or abandonment of the invention" defined by the counts in the interference for the purpose of avoiding the interference, as provided by rule 107, supra. Furthermore, so far as appears of record, there was nothing in the conduct of appellant, either in the interference proceeding or in the ex parte prosecution of his reissue application, to indicate any intention on his part to disclaim or abandon the invention defined by the involved counts for the purpose of avoiding the interference. On the contrary, throughout the proceedings in the interference, counsel for appellant persisted in the contention that appellant could not afford to disclaim or abandon the invention defined by the counts in the interference until he was assured of the allowance of the broad claims (claims 2 and 6) in his reissue application, which counsel claimed more accurately defined appellant's invention and which were identical with the involved counts except that they were not limited to stabilized rubber hydrohalide. Under the related circumstances, the Board of Interference Examiners was clearly without authority to render judgment of priority of invention to appellee under the provisions of rule 125, supra.

[5] It will be recalled that the board stated in its decision that the Examiner of Interferences' order requiring appellant to show cause why judgment should not be rendered against him was issued because of the failure of appellant to include in his reissue application of the claims of his patent corresponding to the counts in issue. It will also be recalled that the order to show cause was issued by the Examiner of Interferences in his decision denying appellee's motion to suspend the interference and remand appellee's application to the Primary Examiner for further ex parte prosecution during the pendency of appellant's reissue application. Appellee's motion was obviously submitted to the end that priority of invention of all allowable common patentable subject matter might be determined in one interference proceeding. It is not clear to the court why the Examiner of Interferences deemed it necessary to issue the order against appellant to show cause why judgment should not be rendered against him in his decision denying appellee's motion to suspend the interference. If the order

was issued, as it evidently was, for the purpose of requiring appellant to relinquish or disclaim the claims of his patent involved in the interference, or, in the alternative, abandon his reissue application, it was without authority of law, as appellant clearly had the right, under the provisions of section 4916 of the Revised Statutes, supra, to file his reissue application and prosecute the same without being forced to disclaim or relinquish the claims of his patent which were not included in his reissue application and which appellant thought, rightly or wrongly, did not correctly define his real invention.

In the case of Thompson v. Keller, 1931 C. D. 2, a situation prevailed similar to that presented in the instant case, except that in that case an application for the reissue of the Thompson patent, from which the claims of the patent were omitted, was filed before the declaration of the interference. In his decision in that case, the Commissioner of Patents, among other things, said:

It is clear that this interference should not be determined or terminated until the reissue application filed by the party Thompson is either granted or abandoned, to the end that the status of the original Thompson patent be first finally settled. In the case of Read v. Scott, 1902 C. D. 242, an interference was declared between Read's patent and Scott's application. During the pendency of the interference, Read filed a reissue application which contained the claims corresponding to the counts in the interference, as well as other claims. Thereafter, a second interference was declared between Scott's application and Read's reissue application. However, before the declaration of the second interference, Read cancelled from his reissue application two of his patent claims which corresponded to two of the counts in the original interference. Those claims had been rejected by the Primary Examiner on a reference. Thereupon, the party Scott moved for a judgment awarding priority of invention to him as to the two counts which were cancelled from Read's reissue application. The motion was denied by the Examiner of Interferences and, on appeal, the examiner's decision was affirmed by the Commissioner of Patents. In his decision, the commissioner called attention to the fact that the two claims there in question were cancelled from Read's reissue application before that application became involved in the second interference, and stated that the cancellation of the patented claims from the reissue application did not amount to a disclaimer of those claims. In so holding, the commissioner relied upon the decision of the Supreme Court in the case of McCormick Harvesting Machine Co. v. Aultman, supra, where it was held, in substance, that until a patent was reissued the original patent stood, so far as the Patent Office was concerned, as though the reissue application had not been filed.

In the Read case, as in the case at bar, the patentee's reissue application was filed subsequent to the declaration of an interference between his patent and the application of the opposing party. There, as here, the patentee cancelled from his reissue application two of his patented claims which were involved in the original interference; and there, as here, such cancellation was effected before the reissue application became involved in an interference with the opposing party. (It will be recalled that appellant's reissue application has not been involved in an interference with appellee's application.)

The difference between the facts in the Read case and those in the instant case is that in that case the patentee Read included in his reissue application, as filed, the claims of his patent which were involved in the original interference and then subsequently cancelled them, whereas, in the instant case, appellant did not include in his reissue application, as filed, the patented claims involved in the interference, but rather, in his response to the order to show cause, inserted such claims in his reissue application, then, upon the rejection of that application by the Primary Examiner on the ground, among others, that the presence of the patented claims (involved as counts in the interference) with their supporting disclosure was inconsistent with the statements contained in appellant's reissue oath, cancelled the patented claims and their supporting disclosure, and, in so doing, stated that that subject matter had no place in his reissue application because, as stated by the Primary Examiner, it was inconsistent with the statements contained in the reissue oath.

[6] It will be recalled that appellant was criticized in the board's decision for cancelling the patented claims (involved as counts in the interference) together with their supporting disclosure from his reissue application, and that the board, contrary to the provisions of section 4916 of the Revised Statutes, supra, the pertinent Rules of Practice in the United States Patent Office, and applicable decisions hereinbefore cited, made the cancellation of that subject matter the basis of its decision holding that appellant had disclaimed it.

For the reasons herein before stated, we are unable to concur in the views expressed by the Board of Interference Examiners that the pendency of appellant's reissue application superseded appellant's patent, and that his cancellation of the patented claims, involved as counts in the interference, from his reissue application was the equivalent of a disclaimer of the subject matter of those claims. Accordingly, we are of opinion that, under the circumstances of this case, the board was without authority to render judgment on the record against appellant and award priority of invention to appellee.

The decision is reversed and the cause remanded for further proceedings.

552 O. G. 371; 30 C. C. P. A. 864; 134 F. (2d) 187

IN RE NELSON (No. 4660)

1. PATENTS-PATENTABILITY-ANTICIPATION

In view of the patents of record, claims 2, 12, 15, 18, 23, 25, 26, and 27, do not define patentable subject matter, and the tribunals of the Patent Office were right in rejecting them on the prior art cited.

2. PATENTS-PATENTABILITY-ANTICIPATION

Claim 13 was properly rejected by the tribunals of the Patent Office on the disclosure in the patent to Gray.

3. PATENTS-PATENTABILITY-NOVELTY

The method of testing defined in claim 20 is not disclosed in any of the prior references and on the record presented that claim was improperly rejected.

United States Court of Customs and Patent Appeals, February 1, 1943

[Modified.]

APPEAL from Patent Office, Serial No. 259,680

Royal R. Rommel for appellant.

W. W. Cochran for the Commissioner of Patents.

[Oral argument November 4, 1942, by Mr. Rommel and Mr. Cochran]

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges

HATFIELD, Judge, delivered the opinion of the court:

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting all of the claims (Nos. 2, 12, 13, 15, 18, 20, 23, 25, 26, and 27) in appellant's application for a patent for an alleged invention relating to a method of hardening the inner wall of pump liners, cylinders, and like articles.

Claims 12, 13, 18, 20, and 27 are illustrative of the appealed claims. They read:

12. The method of hardening steel articles which consists in heating the steel to above its critical hardening temperature, encasing the portion of the steel article which is to be hardened to a less degree than other portions of the steel article in an insulated covering, supplying quenching medium to the article while thus heated in sufficient volume to rapidly cool the exposed portions of the article which it is desired to harden, over a period of time, to harden the article to the desired depth, and subsequently appreciably slowing up on the supply of quenching medium distributed upon the article so as to bring the portion of the article which is covered by insulation thru the critical range more slowly than the portions hardened by the initial quenching action and to prevent latent heat from by insulated area from running back into the hardened area.

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