The decision requires consideration of the validity and proper application of the pertinent provisions of Rule 75.

DEFINITIONS.

For the purposes of this decision the distinction is constantly maintained between "anticipation " and " priority," the former term meaning the existence in the prior art of something which precludes the novelty of the invention in controversy, the latter term meaning the earlier date of invention of the invention in controversy by one or two or more rival inventors. The term "prior art" is herein used as meaning that material of invention which may, if of anticipatory character, defeat the right of an inventor to patent protection solely because of its existence prior to the date of his invention. For the sake of brevity I have adopted the intrinsically inaccurate term "copending patent" to denote a patent granted after the filing of the application for the invention in controversy or other reduction to practice of that invention on an application earlier filed.

THE REQUISITES OF ANTICIPATION.

An invention is not anticipated unless the prior art contains some invention so nearly like it that, in view of all pertinent facts, the difference did not require invention, which was completed or perfected and knowledge of which was accessible to the public prior to the date of its completion. Completion of an invention requires reduction to practice, actual or constructive. Constructive reduction to practice is accomplished when an allowable application has been filed complete in the Patent Office. It has reference to questions pertaining to proceedings necessary to obtain a patent and to the trial of an issue of priority between applications while they remain within the jurisdiction of the Patent Office, which may be here neglected, and to the question concerning completion of the invention to which it relates. Proof of completion of the invention is prima facie when the application is found allowable. It is subject to review as evidence of a fact. Knowledge of an anticipating invention must be accessible to the public. It anticipates only inventions which were completed after such accessibility accrued.

PRIORITY BETWEEN PATENTS WHICH CLAIM THE INVENTION IN CONTRO

VERSY.

In the decision on a question of priority that inventor is held to be the first inventor who first reduced the invention in controversy to

practice or who first conceived that invention and was diligent in reducing it to practice. An application which has matured into a patent and contains claims to a given invention is presumptive proof of the perfection of that invention by the patentee at the date of the application. An issue of priority, which means priority of right to patent protection, may be raised between a plurality of such patents. In this case completion of the proof of constructive reduction to practice by each patentee relates back to the date of the application, being treated as evidence of the fact that he completed the invention at least as early as that date. The legal right of each patentee dates from the fact of his completion of the invention. An issue which is, in fact, that of priority between patents may be raised in any litigation which involves the validity of a patent under the fourth of the defenses which are authorized by the statute, viz:

that he (the patentee of the patent in suit) was not the original and first inventor or discoverer of any material and substantial part of the thing patented, under which no patent is valid if another patent discloses and claims the same subject-matter of invention, irrespective of the scope of the claims, and if the date of invention by the patentee of that patent antedates the date of invention by the patentee of the patent in suit.

EFFECT OF A PATENT WHICH DISCLOSES BUT DOES NOT CLAIM A GIVEN INVENTION AS EVIDENCE OF THE FACT THAT THAT INVENTION WAS PERFECTED AT THE DATE OF FILING THE APPLICATION ON WHICH IT WAS GRANTED.

It is manifest that a patent which discloses but does not claim a given invention is equally good evidence of the fact that that invention was perfected when the application on which it was granted was filed, provided the disclosure of that invention in the application as filed was quite clear, and that it should have the same effect so far as it is regarded merely as evidence. An application which clearly discloses a given invention without claiming it, which application has been found allowable as a whole and has matured into a patent, constitutes complete presumptive documentary evidence, under the general law of evidence, to show the fact that an inventor who produced a like invention after it was filed "was not the original and first inventor." The presumption of perfection of an invention, whether claimed or not, at the date of filing an application. clearly disclosing it upon which a patent has been granted is a sufficient basis for decision, so far as the question concerns the evidence showing that fact.

EFFECT OF A PATENT WHICH DISCLOSES BUT DOES NOT CLAIM A GIVEN INVENTION IN CONFERRING UPON THE PUBLIC THE RIGHT OF A RIVAL INVENTOR AS AGAINST ANOTHER INVENTOR WHO DOES CLAIM THAT INVENTION, RAISING AN ISSUE OF PRIORITY.

But so far as the question concerns the defeat of a legal right or the establishment of a legal right some further considerations are involved.

If we had merely to consider the terms authorizing the fourth defense found in the statute, literally construed, adequate evidence of the fact of perfection of an invention identical in character with the invention in controversy at the date of filing of the application on which a patent which disclosed it was granted would be conclusive to sustain that defense as of that date. The question whether such evidence of the perfection of an invention so nearly like the invention in controversy that the difference required no invention would also sustain that defense is embraced in a discussion hereinafter. The question presents itself, what is the bearing upon the bar of prior invention of the rule, which is so well settled with reference to anticipation, that knowledge of the anticipating invention must be accessible to the public? The bare fact, shown by an application on file in the Patent Office, that the prior invention was perfected at a certain date is not sufficient. It must also appear that that application, if it does not claim the invention, has become a patent. At what date must the granting of that patent occur in order to defeat the right of the inventor of the invention in controversy to patent protection?

When two applications are copending, both of which claim the same invention, there are two inventors each of whom has established his legal right to patent protection on that invention, subject to the possibly superior right of the other.

But what is the real difference between an application which claims a given invention and one which does not but might claim it with reference to prior invention? With reference to an issue of priority between conflicting claims, the difference is that between an applicant who asserts his right and one who does not. If an applicant does not assert his right, having one, he abandons it to the public. (Miller v. Brass Co., C. D., 1882, 49; 21 O. G., 201; 104 U. S., 350; Mahn v. Harwood, C. D., 1885, 144; 30 O. G., 657; 112 U. S., 354; Underwood v. Gerber, C. D., 1893, 340; 63 O. G., 1063; 149 U. S., 224; Millett & Reed v. Duell, Com., C. D., 1901, 410; 96 O. G., 1241; 18 App. D. C., 186.) An applicant who might claim a patentable invention in an allowable application which discloses it has established his legal right to patent protection on that invention by filing the application. To obtain a patent covering that invention, in the absence of

an interference, he has only to take his own. If he does not take his own, his right inures to the public. It may well be considered that when an application which discloses and might claim an invention but does not claim it and one which both discloses and claims it are copending these are in fact conflicting applications and that when both of these applications have matured into patents there are in fact, conflicting patents, one of which represents the interest of the public, the public having succeeded to the right of the inventor who did not claim it. It is a reasonable interpretation of the intent of the statute in authorizing the fourth defense to suppose that it was enacted to provide for that case, among others.

The copending patent which discloses but does not claim the invention in controversy is a definite publication of its disclosure, with a definite assertion of right to patent protection on a certain stated portion of that disclosure, which involves an abandonment to the public by obvious logical implication of whatever right to patent protection may be embraced in that disclosure but omitted from the inventor's assertion of right, so far as he is capable of such abandonment. This abandonment to the public follows upon the establishment of legal right in the inventor by perfection of the invention disclosed, coupled with due proceedings required to obtain a patent. The disclosure in a patent is a unitary whole, all parts of which are related in some way to the subject-matter claimed. (See Drewson v. Hartje Mfg. Co., 131 Fed. Rep., 734, and Jackson Spring Co. v. Adler, post, 218; 246 O. G., 1032; 243 Fed. Rep., 386.) The analogy of the right of the public thus acquired to the right of the patentee to what is included in his assertion of his right seems to be perfect. Since the right of the patentee dates from the perfection of his invention, the right of the public should date from the same event. In this case, as well as in the case of a patent which claims the invention in controversy, the public does not need the consideration which it would receive for granting a patent on the invention in controversy. If one patent has been granted on a given invention, the grant of a second patent on the same invention would be a grant for which the public has received no valuable consideration. Similarly if the public has knowledge of a given invention through its disclosure in a patent which does not claim it and has succeeded to the right of the patentee who might have claimed it the grant of a patent claiming that invention would be a grant for which the public has received no valuable consideration; but the succession of the public to the right of the inventor is not perfected until a patent has been granted, because it depends upon the logical implication of abandonment, which does not occur until the patent has been granted and published. The public has only an inchoate right to an invention dis

closed but not claimed in a pending application, which may or may not be perfected. Such an application does not put the question of priority in issue on behalf of the inventor, and it cannot put that question in issue on behalf of the public, because the abandonment upon which the right of the public depends has not occurred. Therefore a pending application does not support the bar of prior invention unless it contains claims to the invention in controversy, when it puts the question of priority in issue as between rival inventors. Furthermore, not only the right of the public to an invention disclosed but not claimed in an application, but also the interest of the public in the defeat of a claim by another inventor to patent protection on that invention, whether claimed or not, fails to accrue until a patent is granted on that application. So long as knowledge of an invention disclosed in an application is not accessible to the public the interest of the public is served by the grant of a patent to another inventor covering that invention, in the same way as if there existed no knowledge of it by anyone other than the patentee. In that case the public receives the normal valuable consideration for the grant of a patent. For the same reason that accessibility of knowledge of the invention to the public is essential to the defense of anticipation it is essential to the defense of prior invention, although in the latter case it may be effective with reference to a different date.

But this reasoning is applicable only to a copending patent in which the invention in controversy or so much of it as the public may have become entitled to might have been claimed. In Miller v. Eagle Mfg. Co. (C. D., 1894, 147; 66 O. G., 845; 151 U. S., 186) the Supreme Court said:

The result of the foregoing and other authorities is that no patent can issue for an invention actually covered by a former patent, especially to the same patentee, although the terms of the claims may differ; that the second patent, although containing a broader claim, more generical in its character, than the specific claims contained in the prior patent, is also void; but that where the second patent covers matter described in the prior patent, essentially distinct and separable from the invention covered thereby, and claims made thereunder its validity may be sustained.

In the last class of cases it must distinctly appear that the invention covered by the later patent was a separate invention, distinctly different and independent from that covered by the first patent; in other words, it must be something substantially different from that comprehended in the first patent. It must consist in something more than a mere distinction of the breadth or scope of the claims of each patent.

I construe this decision as meaning that the claims in a valid second patent must be addressed to subject-matter of invention which is not germane to the claims in the first patent. So far as the tangible subject-matter of invention upon which the claims in the first patent are