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ESTOPPEL-Continued. 2. DELAY IN COPYING CLAIMS.-Where appellant filed a parent application prior, and a divisional application subsequent, to the issuance of a patent to one Anderson, but appellant did not, during the copendency of his parent application with the application of Anderson, present in his parent application any claim to subject matter claimed by Anderson, and appellant also did not, within two years after the issuance of the patent to Anderson, present any such claim in his divisional application, Held, that appellant was estopped later to copy in his divisional application claims of the patent to Anderson and to make, in that application, a claim not patentably distinct from said patent claims. *In re Hanna, 526.

3. SAME. Where appellant did not, during the copendency of his application and that of Anderson, suggest by way of claim or claims that there was common subject matter upon which an interference was proper, Held that there was no duty upon the Examiner to declare an interference. *Id.

4. SAME. Issuance of the Anderson patent Held to give appellant constructive notice of its provisions, and to place upon appellant the responsibility of seeking an interference therewith. *Id.

EVIDENCE. See Appeal to the U. S. Court of Appeals for the District of Columbia; Appeal to the U. S. Court of Customs and Patent Appeals, 4, 5; Construction of Claims, 1; Decision of the Supreme Court of the United States; Discretion of the Court; Interference, 2, 3, 5, 22, 26, 27, 28, 29, 34, 38, 43, 45, 49, 55, 66, 68, 69, 70; Invention, 1; Licenses; Patentability, 54; Rejection of Testimony; Suits under Section 4915, R. S., 1; Trade-Marks, 36, 38, 45, 73, 74; Validity of Patents, 3.

EX PARTE QUESTIONS. See Interference, 9, 30; Right to Make Claims, 6; Trade-Marks, 8, 9.

EXPERIMENTS. See Claims, 4; Invention, 12; Patentability, 54.

EXTENSION OF BUSINESS.

See Trade-Marks, 34, 42.

FEDERAL RULES OF CIVIL PROCEDURE. See Appeal to the U. S. Circuit Court of Appeals; Jurisdiction of the Court, 5; Trade-Marks, 19, 20, 47, 48, 49, 50, 51.

FEDERAL STATUTES.

FEES. See Applications, 7.

See Confliction of State Law and Federal Policy.

FIRST AND ORIGINAL INVENTOR. See Interference, 19, 42, 43, 45, 51; Suits under Section 4915, R. S., 4.

FOREIGN APPLICATIONS. See Interference, 48, 64.

FOREIGN PUBLICATIONS.

See Anticipation; Invention, 8.

FORFEITED APPLICATIONS. See Applications 7, 8; Continuing Applications, 1, 2.

FORMER DECISIONS CITED. See Appeal to the U. S. Court of Appeals for the District of Columbia; Appeal to the U. S. Court of Customs and Patent Appeals, 14, 15; Applications, 7, 10; Certiorari, 4; Claims, 7, 11, 14. Confliction of State Law and Federal Policy; Decisions of the U. S. Court of Claims, 1; Discretion of the Court; Election by Common Assignee, 1; Interference, 2, 11, 42, 57, 58, 73; Jurisdiction of the Court, 3, 4; Patentability, 15, 36, 42, 46, 97, 104, 105; Reissue Applications, 1; Renewal Applications; Res Adjudicata, 3; Right to Make Claims, 6; Trade-Mark's, 4, 6, 14, 52, 67; Validity of Patents, 5. FRAUD. See Interference, 34.

FUNCTION. See Claims, 3, 8, 11; Construction of Specifications, 2, 3; Patentability. 2, 36, 105.

GEOGRAPHICAL TERMS.

See Trade-Marks, 31, 35, 62.

GOODS OF THE SAME DESCRIPTIVE PROPERTIES. See Trade-Marks, 13, 21, 22, 23, 24, 36, to 43 inclusive, 68, 71, 72.

GRANT OF PATENT. See Anticipation; Applications, 8; Construction of Statutes; Election by Common Assignee, 1; Interference, 8, 14; Invention, 4, 11; Patentability, 44, 50, 66, 78.

INADVERTENCE. See Applications, 3; Election by Common Assignee, 2; Interference, 22; Particular Patents, 3; Validity of Patents, 3, 4.

INDEFINITNESS. See Claims, 1, 2, 3, 4, 5, 6, 15; Patentability, 16, 18, 105, INFRINGEMENT. See Claims, 1, 4; Decisions of the U. S. Court of Claims, 1, 2; Discretion of the Court; Interference, 74; Validity of Patents, 1, 2, 5, 6.

1. DAMAGES.-"If a defendant has added 'non-infringing and valuable improvements which have contributed to the making of the profits', it is not liable for benefits resulting from such improvements.' • Marconi Wireless Company of America v. The United States; The United States v. Marconi Wireless Company of America, 781.

2. PATENTS-VALIDITY-COUNTERCLAIM FOR DECLARATORY JUDGMENT.Where respondents brought a suit against petitioners for specific performance of a license agreement under a reissue patent, and in their bill alleged that contrary to the provisions of the license agreement petitioners were manufacturing and selling certain devices which infringed the reissue patent; and petitioners answered the bill and also filed a counterclaim wherein they prayed for a declaratory judgment and prayed that the reissue patent sued upon and another reissue patent obtained upon surrender of the same original patent be declared invalid; and the district court found that the accused devices did not infringe the reissue patents Held that the issues raised by the counterclaim were justifiable and that the controversy between the parties did not come to an end on the dismissal of the bill for noninfringement. Altvater et al v. Freeman et al, 833.

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3. SAME-SAME-SAME.-"Our conclusion is that it was error for the Circuit Court of Appeals to have treated the issues raised by the counterclaim as moot. They were not moot; and the district court had passed on them. Accordingly, the Circuit Court of Appeals should have reviewed that adjudication." Id.

INTERFERENCE. See Appeal to the U. S. Court of Customs and Patent Appeals, 10, 11, 12, Construction of Claims, 4; Estoppel, 1, 3, 4; Patentability, 92, 93; Rejection of Testimony; Res Adjudicata, 1, 3, 4; Right to Make Claims, 4, 6; Suits Under Section 4915, R. S., 2, 3, 4, 5, 6.

Abandoned Experiments

1. ABANDONED EXPERIMENT.-Where the party Taylor and his witness, Wood, felt that there was a need for, or that a demand could be created for, a successful circuit breaker of the type defined in the counts; and Taylor made a device, tested it and then placed it in his desk, and it remained there until four years later when commercial devices of the same type began to appear on the market Held that the only reasonable conclusion to be drawn from the facts and circumstances was that the work earlier done constituted nothing more than an abandoned experiment. *Taylor v. Swingle, 630.

Burden of Proof

2. BURDEN OF PROOF.-"We would observe that while the burden was upon Shumaker to establish derivation of the invention from him by Paulson when Shumaker produced conclusive evidence of disclosure of the invention to Paulson prior to any proven date of conception by Paulson, he had made a prima facie case of derivation by Paulson from him; that while the burden of proof was not thereby shifted from Shumaker to Paulson, it was the duty of Paulson to go forward with proof to overcome the prima facie case made by Shumaker. See McCormick et al. v. Plumstead, 25 C. C. P. A. (Patents) 925, 94 F. (2d) 999, 493, O. G. 202." *Shumaker v. Paulson, 567.

3. SAME.

In an interference between the patent to Haffcke, issued January 25, 1938, on an application filed July 30, 1936, and the application of Dreyer, Jr., filed December 13, 1938, for the reissue of a patent granted February 8, 1938, on an application filed October 2, 1934, Held that the burden was upon Haffcke to establish priority of invention by a preponderance of the evidence. *Dreyer, Jr., v. Haffcke, 689.

INTERFERENCE-Continued.

Conception of Invention

4. CORROBORATION.-A signed, dated, and witnessed sketch which was not sufficiently corroborated Held to be a merely self-serving declaration by the inventor as to the date of his conception. *Shumaker v. Paulson et al (No. 4689); Paulson v. Hyland (No. 4690); Paulson v. Hyland (No. 4692); Shumaker v. Paulson et al (No. 4693); Paulson v. Hyland (No. 4694), 547.

5. SAME."It is elementary in patent law that in an interference proceeding the mere unsupported evidence of the inventor as to the fact and date of conception cannot be regarded as sufficient proof of prior conception." *Id.

6. CONTRIBUTIONS OF AGENTS INVOLVING ONLY MECHANICAL SKILL.-"It appears that Garlick's first machine was a foot operated machine and that count 2 relates to a power-operated machine. We think it very obvious from the record that Garlick contemplated from the beginning the use of his invention in a power-operated machine, and we are in agreement with the Board that only mechanical skill was involved in adopting the machine to a power-operated machine. Therefore, the work of Barney and Lee inured to the benefit of Garlick." *Manny v. Garlick et al, 419.

Construction of Claims

7. CONSTRUCTION OF COUNTS.-Held that in construing interference counts, definite, specific limitations may not be ignored, and that the doctrine of equivalency is not applicable. *Potts v. Kimball, et al, 258.

8. SAME. Where the applicant Potts, in describing in his application in interference the selector mechanism upon which he relied to support a claim copied by him from the Kimball et al. patent, contented himself for the most part by saying that said mechanism is "essentially the same as that illustrated and described in a copending application * * * by S. Morton et al.," and a patent was granted upon the Morton et al. application Held that in determining what breadth of construction should be given to the term "cams," appearing in the copied claim, it would seem important to refer to the Morton et al. patent. *Id.

Construction of Statutes

9. RULE 109-MOTION TO ADD AN APPLICATION OR PATENT OF OPPONENT.The provision of rule 109 that "Any party to an interference may bring a motion to put in interference any claims already in his application or patent which should be made the basis of interference between himself and any of the other parties" Held "not to be construed to mean that a party may bring a motion to add to the interference an application or patent of his opponent which is not involved in the interference," and Held that "the proper procedure in such a case is for the applicant to prosecute the claims in question ex parte." Schoepf et al v. Hewitt, 2.

Diligence

10. DILIGENCE.-"It is well established that the question of diligence must always be decided in the light of the particular facts in the individual case. *Shumaker v. Paulson et al; Paulson v. Hyland, 547.

INTERFERENCE-Continued.

Disclaimers

11. DISCLAIMER OF PATENT CLAIMS.-"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 * * * 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, 117 O. G. 1798, 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., 180 O. G. 879, 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. *McCoy v. Pfeiffer, 264.

12. AUTHORITY TO ISSUE ORDER TO SHOW CAUSE WHY JUDGMENT SHOULD NOT BE ENTERED.-"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 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." *Id.

Discretion of the Commissioner of Patents

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13. 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. Geophysical Development Corporation, Krasnow and Curtiss v. Coe, Com. of Patents, 101.

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Estoppel

14. ESTOPPEL.-Under the circumstances that the parties J and W were both in the employ of the U. S. Navy; that they executed nonexclusive licenses under their respective applications to the U. S.; that each had separate and adverse interests remaining; that J requested the Judge Advocate General of the Navy to take over the prosecution of his application, after he had learned that W was seeking to have the same official prepare an application upon the same invention; that prior to the issuance of a patent to J, W had no knowledge of the J application and of its prosecution by the Judge Advocate General; and that the W application, although earlier prepared for filing by the Judge Advocate General, was not filed until after the issuance of the said J patent Held that no estoppel in the form of res judicata, estoppel by election, or equitable estoppel existed against W, and Held that the question of actual priority of invention between J and W was properly considered by the Examiner of Interferences and the Board of Appeals. *Jones v. Winsor, 235.

860

INTERFERENCE-Continued. 15. SAME. Where S was involved upon the same application in three interferences: T v. S, L v. S, and S v. R, the interfering applications of T and L and the patent to R being owned by a common assignee, and these three interferences were concurrently decided by the Examiner of Interferences and also by the Board of Appeals, with an award of priority to S in interference T v. S and in interference L v. S, but with an award to R in interference S v. R, and neither interference Tv. S nor interference L v. S had been terminated when Sappealed interference S v. R to the Court of Customs and Patent Appeals Held that R was not estopped by judgment to contest interference S v. R because of the said awards to S ini nterferences Tv. S and L v. S. *Steinmayer v. Ramsey, 213. 16. SAME. Held that the responsibilities under rule 109 of the common assignee of the T and R applications were not affected by the fact that the application of S did not during the motion period in interference Tv. S contain claims to the invention expressed in the counts of interference S v. R, nor by the fact that claims to said invention had been canceled in the S application prior to the declaration of interference T v. S *Id. 17. ESTOPPEL AGAINST ESTOPPEL.-Where the application of T in interference T v. S disclosed the invention defined by the counts of interference S v. R Held that it was the duty of S, as well as the duty of the common assignee of the T and R applications, if either desired to contest the issue of priority of invention of the subject matter of interference S v. R, to have moved during the motion period to include claims to said subject matter in interference Tv. S; that, having failed to do so, each was thereafter estopped from bringing into interference T v. S the subject matter of interference S v. R; and that each was thereafter estopped from presenting claims to said subject matter "as a basis for another interference between the same parties." *Id. 18. SAME. "The facts of record present a typical case of 'mutual estoppel' or estoppel against estoppel.' in favor of either party. 31 C. J. S., Estoppel, §65." That being so, estoppel does not run *Id.

First and Original Inventor

19. ORIGINALITY. Where there was a clear disclosure of the invention in issue by Shumaker to Paulson, and that disclosure was not denied by Paulson, and Paulson did not prove that he was in possession of the invention prior to such disclosure Held that Paulson derived the said invention from Shumaker. *Shumaker v. Paulson, 567.

20. COUNTS

Limitation of Claims

INTRODUCTORY PHRASE.-"We are not concerned here with the matter of appearance but solely with structure, and we are unable to discern any sound reason for holding that the introductory phrase of the counts, 'A dish for maintaining food at a desired temperature,' should be regarded as a limitation affecting the actual structure which the counts describe." Bartsch, 330. *Bartsch v. Baker, Baker v.

Motion to Amend Interference

21. REVIEW OF DENIAL OF MOTION UNDER RULE 109.-"A motion to amend an interference, under rule 109, * * * and merely presents the question as to whether or not the interference is an interlocutory motion shall be redeclared. It does not, when denied, relate to the issue of priority of invention of the count or counts involved in the interference, and neither the Board of Interference Examiners, nor, on appeal, this court, has authority to review and determine that issue." and v. Taylor, Jr., 710. *Josser

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