the bichromate is obviously intended to yield chromic acid by reason of heat, thus giving the coloring material desired.

It may be, as appellant contends, that the Levin patent is not in the same art as the Smith patent. Even assuming that to be true, in our opinion the arts of the two references are closely analogous, the only distinction which we can see being that in the Levin patent grains of material are coated while in the Smith patent larger articles formed of the same or similar material are coated. We can perceive no difference in the process of coating granules and coating larger articles. It would be obvious to one skilled in the art, if he desired the result sought by appellant, to employ the clay of the Smith patent with the coloring mixture of the Levin patent. In our opinion claims 73 to 80, 82, and 85 were properly rejected by the Patent Office tribunals as being unpatentable over the Levin reference in view of the Smith patent.

Since no generic claim was allowed, the rejection of claims 61 to 69 was proper.

All of the other matters urged by appellant have been considered, but we deem it unnecessary to extend this opinion by discussing them.

The decision of the Board of Appeals is affirmed.

556 O. G. 712; 30 C. C. P. A. 1115; 136 F. (2d) 749

IN RE HANNA (No. 4707)

PATENTS-PATENTABILITY-ESTOPPEL.

Appellant's application during its copendency with that of an issued patent did not contain any claim to the subject matter of the claims on appeal. In delaying four years before attempting to claim such subject matter he failed to follow timely and proper procedure for the protection of whatever rights he may have had with respect thereto.

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

APPEAL from Patent Office, Serial No. 94,499

[Affirmed.]

Blair, Curtis & Dunne and Paul A. Blair (Edward G. Curtis, Charles C. Ladd, Gordon K. Lister and J. Harold Kilcoyne of counsel) for appellant.

W. W. Cochran (R. F. Whitehead of counsel) for the Commissioner of Patents.

[Oral argument March 2, 1943, by Mr. Lister and Mr. Whitehead] Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges

GARRETT, Presiding 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 examiner

rejecting three claims, numbered 24, 25, and 26, introduced by amendments into appellant's application for patent filed August 6, 1936, which application was a division of a prior application filed November 6, 1928.

The subject matter of the application relates to stokers, "particularly to stokers for use on locomotives and the like." For reasons hereinafter appearing it is unnecessary to quote or analyze the claims. It appears that claims 25 and 26 were copied from a patent, No. 2,029,295, issued to one H. P. Anderson February 4, 1936, upon an application originally filed June 24, 1930, and renewed June 9, 1934, appellant's purpose in copying them being to secure declaration of an interference with the Anderson patent. In the patent the claims were numbered 28 and 29.

The record certified to us by the Commissioner of Patents does not embrace the text of the proposal to amend by copying the claims from the patent, but it appears that it took place at some time between February 18, 1941, and May 13, 1941, the same occurring under the following circumstances.

Appellant's divisional application filed August 6, 1936, seems to have been allowed on January 11, 1939, and on May 6, 1939, he renewed it with claims additional to the claims which had been granted. On April 12, 1940, the renewal application was amended by consolidating and rewriting claims 21 and 23 thereof, the new or amended claim being numbered 24, and being the claim 24 here involved. With the amendment appellant called attention to claim 29 of the Anderson patent and suggested that if the latter claim was allowed Anderson "it would seem logical that appellant's claim 24 should be allowed." No interference proceeding was suggested or requested by appellant at that time, but favorable consideration was requested "of claims 22 and 24" with the further request that in the event of their rejection "the amendments to claim 22, together with claim 24, be entered for purposes of appeal." On April 17, 1940, claim 22, as amended (the amendments being of no consequence here), was finally rejected by the examiner (apparently it had been previously rejected on October 19, 1939, before amendment) upon a patent to one Fahnestock in view of a patent to one Jackson, and new claim 24 was finally rejected by him upon the patent to Jackson alone. With respect to appellant's reference to the Anderson patent the examiner said:

Applicant's remarks as to the Anderson patent 2,029,295 are noted, but there is nothing in that situation which would warrant the Examiner in reversing his present position or allowing the rejected claims. Aside from the fact that these claims must be considered here on their merits, rather than by blind following of alleged precedent which may have involved other factors and other background of art, it is to be noted that applicant had opportunity to copy claim 29 of Anderson promptly and seek an interference, but did not avail himself of that opportunity. The question of interference cannot now be entertained.

Upon appeal, the board, in a decision rendered February 18, 1941, reversed the examiner's decision rejecting the claims on the patents cited (and claim 22 stands allowed), but of its own motion rejected claim 24 "as not patentably distinguishing over the matter disclosed and claimed in Anderson."

This was the first citation of the Anderson patent as a reference and, since it constituted a new ground of rejection, prosecution of the case was reopened before the examiner under Patent Office rule 139, and appellant then, upon some date not disclosed by the record before us, copied the claims of the Anderson patent which became claims 25 and 26 here at issue (thus adding them to claim 24 for consideration) and, for the first time, requested the declaration of an interference with the Anderson patent. So far as we can determine from the record, the request for an interference did not specifically embrace claim 24 which, as has been indicated, was a new claim originating with appellant and not copied from the patent.

It will be noted that claim 24 was introduced more than four years after the issuance of the Anderson patent and that claims 25 and 26, in connection with which the interference was sought, were introduced more than five years after such issuance.

In a decision dated May 13, 1941, the examiner expressed "full concurrence with the ultimate conclusion reached by the Board that claim 24 is not in fact patentable to applicant," and denied appellant's request that he withdraw the Anderson patent as a reference.

It appears from that decision of the examiner that he had previously rejected claims 25 and 26 on April 28, 1941, and that he adhered to that rejection. The decision of April 28, 1941, is not in the record, but in the examiner's statement following the second appeal to the board it is stated:

Claims 25 and 26, verbatim copies of Anderson's claims 28, 29, stand rejected on the ground that they are not readable on applicant's disclosure and on the ground that applicant has no right at this time to copy the patent claims and contest priority, because of laches.

Following the above, the examiner analyzed the claims, stated his reasons for holding that they were not readable upon appellant's disclosure, and (we quote at some length because of the character of the issue involved) continued:

It is obvious that the ultimate issue here involved, including the question of declaring an interference with a patent (a matter for the discretion of the Commissioner) cannot be entirely separated from the question of patentability of claims 25, 26 to applicant (a matter for review by the Board of Appeals). Certain comments are therefore appended.

Applicant urges that it was the duty of the Examiner to suggest a claim or claims of Anderson to him for the purpose of interference, and that no responsibility rested on him [applicant] to discover interfering patent claims and copy them promptly. The Examiner does not agree with this position, and

after a careful review of the record in this case and its parent case fails to find evidence of any situation where it would have been proper for the Examiner to suggest an interference.

The present case as filed was directed to a coal crushing feature irrelevant to the present issue; and for two years after issue of the Anderson patent, it contained no claim suggestive of conflict with Anderson. During the same period no claims of the parent case warranted interference proceedings. Certain claims canceled from the parent case before the critical period began, are urged as maintaining the present right to an interference, but applicant's theory of relying on a claim pending at any time in the life of the application is deemed unsound. In the opinion of the Examiner, the most careful interference search on Anderson's claims as passed for issue, and on applicant's claims during the period Feb. 4, 1936 to Feb. 4, 1938, would not have revealed any basis for interference.

The critical period relied on by the Examiner, running two years from the issuance of the patent, is deemed warranted by Chapman v. Wintroath, 252 U. S. 126.

Since applicant was the first to call attention to the Anderson patent and to claim 29 thereof, under date of April 12, 1940, when the patent had been outstanding for more than four years, without copying a claim or requesting interference, it would have been manifestly improper for the Examiner to suggest that action. Applicant might have had good reasons unknown to the Examiner for not copying a claim; moreover, at that time the two-year period for copying patented claims had long passed. Indeed, the Examiner never found it necessary to decide whether applicant could make a claim of Anderson until the filing of claims 25, 26 on April 17, 1941 presented this question; whereupon he promptly found and ruled that such claims were not properly supported.

Applicant has never raised the question whether claims 25 and 26 could be modified slightly as to wording to render them readable on his own disclosure, but without material change of substance, and so support an interference under the doctrine of Card and Card, 112 O. G. 499. Obviously, no advance ruling could be made on such proposal because of indefiniteness as to what changes might be involved.

Applicant's failure throughout a period of more than five years from the issue of the Anderson patent to request interference therewith, with delay for more than one year after scrutinizing the patent before filing the request, is held to constitute laches defeating his right to contest priority with the patentee. The appeal to the board from the examiner's decision of May 13, 1941, was taken June 2, 1941, various reasons of appeal being stated. In its decision (from which the present appeal to us was taken) the board summarized the issues presented by the reasons of appeal as follows:

Three essential questions are involved in this appeal, namely:

(1) Do claims 25 and 26, copied from the Anderson patent 2,029,295, February 4, 1936, read upon appellant's disclosure?

(2) Does claim 24 patentably distinguish over the matter claimed by Anderson? and

(3) Is appellant estopped from copying Anderson's claims?

The board disagreed with the examiner's holding that claims 25 and 26 are not readable upon appellant's disclosure, and further held

that there was no "patentable distinction between claim 24 and the matter claimed in claims 25 and 26," but held that appellant was estopped from "copying Anderson's claims," saying:

Coming now to the third question [above stated], it appears to be clear that appellant was not asserting any claims which would dominate the matter claimed in the Anderson patent at any time during the two years following the issuance of that patent. While we have considered the arguments advanced by appellant, it is our view that his position is not sound. It is considered that it is immaterial whether an applicant is aware of a patent or not as the law does not require him to make the identical claims of the patent; all that is required is that he shall be urging claims covering the matter which is claimed in the patent before the critical period has terminated and shall continue to urge such claims. We do not consider that an examiner's failure to suggest copying claims of a patent excuses an applicant from not copying them. We do not imply by this statement that we think that the examiner should have made such a suggestion in this case. It is considered, therefore, that appellant is clearly estopped from copying claims of the patent or from receiving the allowance of claims which do not patentably distinguish over the matter claimed in the patent.

To the extent and for the reasons above stated, the decision of the examiner is affirmed in rejecting all of the appealed claims.

So, we have this situation:

Appellant has presented claims which, in the opinion of the board, he might have made based upon the disclosure of his application which was copending with the Anderson application, and which had they been presented either before the issuance of the Anderson patent or in due time after its issuance presumably would have led to the declaration of an interference between appellant and Anderson. No such claims were presented, however, until more than four years (if claim 24 be regarded as presenting interfering subject matter) after the Anderson patent issued, and no interference was requested by appellant until more than five years after the patent had issued when the copied claims were presented, and the Anderson patent was treated by the board as a reference against all the claims.

While appellant in his reasons of appeal before us alleges that the board erred "in holding that the later-filed Anderson patent may properly be used as an anticipating reference against applicant's claims," his contention in that regard is not based upon the merits of the claims but constitutes a part of his argument respecting his right to have an interference declared.

So, the only question with which we are here concerned is the question of estoppel. The board did not cite any authority in its decision, but presumably, agreed with the examiner as to the applicability of the decision of the Supreme Court in the case of Chapman v. Wintroath, 252 U. S. 126.

The earliest court decision bearing upon the question here involved is that in the case of Rowntree v. Sloan, 45 App. D. C. 207. The