event, however, this seems to me to be the kind of a case in which this Court should be most reluctant to interfere with the procedure determined upon by the Circuit Court of Appeals.

If we are to consider the correctness of the ruling that the issues relating to the validity of the reissue patents are not "justiciable,” I find it too difficult to accept the reasoning of my brethren. The Court's conclusion that the Circuit Court of Appeals erred in finding "mootness" as to the questions raised by the counterclaim rests substantially upon the notion that a controversy still exists because the defendants are laboring under the "heavy" obligation of paying royalties under the license agreement. But we have held that the controversy must be "definite and concrete," "real and substantial," in order that a declaratory judgment may be given. Aetna Life Ins. Co. v. Haworth, 300 U. S. 227, 240-41; and see Md. Casualty Co. v. Pacific Co., 312 U. S. 270, 273. The defendants' obligation to pay royalties under the license agreement cannot be very substantial at the present time since both the district court and the Circuit Court of Appeals have held that the license agreement terminated in 1936 with the surrender of the original patent. In view of these rulings the defendants' need for "relief" is practically infinitesimal, since all that remains to be done is the entry of a formal order vacating the 1933 decree. The "insecurity" and "peril" from which lititgants can be saved only by a declaratory judgment are conspicuous by their absence from this case at this time. It may very well be that one who infringes a patent should be entitled to obtain a declaration as to its validity even though he is under no contractual obligation to pay royalties as a licensee. The existence of an invalid patent may substantially impair the economic position of those who market articles which infringe such a patent, even though no infringement suits may be immediately threatened. Potential purchasers may naturally be reluctant to establish business relations upon so insecure a basis. But the Court has not chosen to sustain the propriety of a declaratory judgment here upon this ground, and it is therefore idle to consider its merits.

Mr. Justice ROBERTS joins in this opinion.

DIGEST OF DECISIONS

Decisions of the Board of Appeals of the United States Patent Office are indicated by the letter (*); of the United States Court of Appeals for the District of Columbia by the letter (); of the United States Court of Customs and Patent Appeals by a star (*); and of the Supreme Court of the United States by the letter (•)]

ABANDONED APPLICATIONS. See Election by Common Assignee, 1; Interference, 12; Reissue Applications, 1.

ABANDONED EXPERIMENTS. See Interference, 1.

ABANDONMENT OF INVENTION.

See Interference, 30, 42, 55.

ABANDONMENT OF TRADE-MARKS. See Trade-Marks, 15, 73.

AMENDMENTS. See Applications, 6, 10; Construction of Statutues; Divisional Applications, 3, 4, 5, 6.

ANALOGOUS ART. See Patentability, 2, 60.

ANCILLARY QUESTIONS. See Interference, 13, 75.
ANTICIPATION. See Invention, 5; Patentability.

PATENTABILITY-FOREIGN PUBLICATION.-The principles of law governing foreign publications applied by the courts in infringement suits Held equally applicable to proceedings to obtain a patent, and Held that a foreign publication cannot operate to anticipate a claimed invention unless it meets such principles. a Baldwin-Southwark Corporation and Blanks v. Coe, Commissioner of Patents, 24.

ANTI-TRUST ACT. See Certiorari, 2.

PATENTS SHERMAN ANTI-TRUST ACT-PRICE-FIXING.-"Agreements fixing the competitive sales price of articles moving interstate, not within the protection of a patent, are unlawful because prohibited by the Sherman Act." • Sola Electric Company v. Jefferson Electric Company,

765.

APPEAL TO THE U. S. CIRCUIT COURT OF APPEALS.

1. APPEAL-TIME FOR APPEALING TO THE CIRCUIT COURT OF APPEALS.— Where petitioner took his appeal to the circuit court of appeals more than three months after the district court had entered judgment dismissing his complaint, but within three months after the district court had denied a motion by him under rule 52 (b) of the Rules of Civil Procedure, asking that the findings "be amended and supplemented" Held that petitioner's appeal was timely under 28 U. S. C. § 230. • Leishman v. Associated Wholesale Electric Company, 768.

2. SAME SAME.-"We conclude that a motion under rule 52 (b) such as the instant one which seeks to amend or supplement the findings of fact in more than purely formal or mechanical aspects tolls the appeals statute, and that the time for taking an appeal runs from the date of the order disposing of the motion. Cf. Continental Oil Co. v. United States, 299 U. S. 510." Id.

APPEAL TO THE U. S. COURT OF APPEALS FOR THE DISTRICT OF COLUMBIA. See Trade-Marks, 1, 2, 3, 4, 5, 6, 7.

APPEAL DOCTRINE OF ABBOTT V. COE. "In view of * * * contrariety in result and reasoning, on the part of both the primary tribunals and the parties, the case is not one appropriate for disposal merely by applying the doctrine of Abbott v. Coe, 512 O. G. 3, 71 App. D. C. 195, 109 F. (2d) 449 (1939), and a statement of the evidence from which the various opinions have been drawn is necessary." Abbott and Abbott Machine Company v. Shepherd and the Clark Thread Company, 37.

843

APPEAL TO THE U. S. COURT OF CUSTOMS AND PATENT APPEALS. See Interference, 15; Jurisdiction of the Courts, 6; Trade-Marks, 8, 9. 1. APPEAL RECORD-EFFECT OF OMISSION OF PATENT CITED BY EXAMINER. Where the appellant did not include in his record on appeal a patent which the Examiner cited, but to which the Board of Appeals did not refer, Held that the statement of the Examiner relative to the disclosure of said patent must be regarded as correct. *In re Darms,

126.

2. SAME REMAND.-Where the Primary Examiner ruled that claim 8 of appellants' application is drawn to a non-elected species and that, in the absence of the allowance of a generic claim, appellants were not entitled therein to prosecute said claim; but neither the Examiner nor the Board of Appeals indicated whether claim 18, 19, or 20 of the application, which they found unpatentable over the prior art, is generic; and the Court of Customs and Patent Appeals found claims 18, 19, and 20 to be patentable Held that, so far as claim 8 was concerned, the cause would be remanded to the tribunals of the Patent Office for further consideration. *In re Martin et al., 189. 3. SAME TECHNICAL QUESTIONS MANIFEST ERROR.-"The questions involved are extremely technical in their nature, involving to a considerable extent an expert knowledge of chemistry and we would be warranted in reversing the decision appealed from affirming the decision of the Examiner only if we are convinced that the decision is manifestly wrong." *In re Bertsch, 224.

4. SAME JURISDICTION.-Where the Board of Appeals, on appeal thereto by interferant S, affirmed the decision of the Examiner of Interferences denying, at final hearing, a motion by S to dissolve based on the ground that the assignee of the patent to interferant R was estopped under rule 109 to contest priority as to ciaims copied by S from said patent to R, and also affirmed, in view of evidence, the award of priority by the Examiner of Interferences to R; and S did not include said evidence in his transcript upon appeal to the Court of Customs and Patent Appeals, but in his reasons of appeal did reassert the ground of his motion to dissolve Held that the issue of priority of invention was raised by the reasons of appeal and that the court had jurisdiction to determine the question of estoppel. *Steinmayer v. Ramsey, 213..

5. SAME SAME.-"If appellee was estopped to contest the issue of priority of invention, as claimed in appellant's reasons of appeal, then, of course, the Board of Appeals erred in considering the evidence introduced by appellee and in awarding priority of invention to him. We conclude that the issue of priority of invention is raised by appellant's reasons of appeal. Accordingly, appellee's motion to dismiss the appeal is denied.' *Id.

6. SAME TECHNICAL QUESTIONS-MANIFEST ERROR.-"The questions in-
volved are highly technical, involving an intimate knowledge of the
electrical art. Practically all of the record consists of matters ad-
dressed to those skilled in the electrical art, and presumably the Patent
Office tribunals passing upon appellant's application were thoroughly
familiar with the art involved. Therefore, in accordance with the
general rule concerning such matters, we would be warranted in
reversing the decision appealed from only if it appears to us that such
decision is manifestly wrong." *In re Cohen, 287.

7. SAME REASONS OF APPEAL-REMAND.-Where claim 24 of appellant's
application was rejected by the Primary Examiner on two grounds,
and as to both grounds the rejection by the Examiner was reversed
by the Board of Appeals, but the Board did not allow this claim; and
where in his reasons of appeal the appellant merely stated that:
"The Board erred in not allowing claims * * * 24 *
Held that, under the circumstances, said reason of appeal was suffi-
cient to warrant remanding claim 24 to the Board for further con-
sideration, since the only defect in the reason of appeal was that it did
not state that the Board erred in not making a specific ruling as to the
allowability of claim 24, and this error was apparent upon the face of
the record. *Id.

APPEAL TO THE U. S. COURT OF CUSTOMS AND PATENT APPEALS-Continued.

8. SAME SAME JURISDICTION.-"There is nothing in the reasons of appeal with respect to counts 3 and 4 which would invoke our jurisdiction, all of said reasons being confined to predicating error in the decision of the Board with respect to counts 1, 2, 5, and 6. Since those counts are not before us they will not be considered and argument contained in appellant's brief concerning them must be ignored." *Sperry v. Aufiero and Mayo, 319.

9. SAME EFFECT OF GENERAL AFFIRMANCE BELOW.-"We do not think the statement of the Board that the references other than Litner 'have but a remote bearing on the subject matter in issue and discussion of same is not deemed necessary' is an express reversal of the grounds of rejection by the Examiner by the use of those references * * * We are of opinion that the Board's general affirmance of the Examiner requires that we, in revising the decision of the Board, take into consideration the applicability of certain of said references when considered with Litner." *In re Freshman, 368.

10. SAME REASONS OF APPEAL.-Where the Primary Examiner denied a motion by appellant to dissolve the interference with respect to count 2 on the ground that appellees had no right to make that count, but appellant did not raise this question before the Board of Interference Examiners and the question was not referred to in the decision of said Board, and in appellant's brief it was not pointed out in what particulars the disclosure of appellees' application failed to support the count Held that a reason of appeal alleging that the Board erred in failing to dissolve the interference as to count 2 would not be considered. *Manny v. Garlick et al., 419.

11. SAME-SAME JOINT OR SOLE INVENTORSHIP.

appeal reading:

In regard to a reason of

"The Board of Interference Examiners erred in failing to hold that there was no proof of joint activity on behalf of those constituting the party Garlick, Lee and Barney with reference to the invention of any count in interference and that said party had failed to sustain the burden of proving good faith and showing diligence in efforts to re-form the interference, thereby disentitling said party or Garlick to an award of priority in view of the proofs adduced."

Held that "With respect to the first part of this reason of appeal ** * we do not construe it as presenting any question requiring our consideration, for if the Board erred in the respect therein stated an award of priority to appellant would not for that reason be warranted, and furthermore if it should have been held that Garlick, Lee and Barney were, in fact, joint inventors then the second part of this reason of appeal would present a wholly immaterial question." *Id. 12. SAME REMAND.-Where the Examiner of Interferences found lack of diligence by Garlick and the party Garlick et al. in seeking reformation of the interference to include a sole application of Garlick for the joint application of Garlick et al., and the Board of Interference Examiners did not consider this question in awarding priority to Garlick Held that "the decision of the Board should be reversed and the cause remanded, in order that the Board of Interference Examiners may decide the question of diligence by Garlick or the party Garlick et al. to convert the joint application into a sole application of Garlick." *Id. 13. SAME-RECORD AND DECISION-PUBLICATION.-Held that the record on appeal and the decision of the Court of Customs and Patent Appeals would not, on appellant's motion, be sealed against publication. *In re Sackett, 361.

14. SAME TECHNICAL QUESTIONS MANIFEST ERROR.-"At the outset we would observe that the issues here presented involve highly technical matters involving the operation of a very large number of parts of the device disclosed, and the rule is here applicable that concurring decisions of the tribunals of the Patent Office will not be reversed unless it appears that they were manifestly wrong. In re Wuertz et al., 27 C. Ĉ. P. A. (Patents) 1039, 110 F. (2d) 854, 519 O. G. 7.” *In re Stacy, 383.

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