McCoy, J.:

This is an appeal from a decision of the Commissioner of Patents awarding priority of invention to Podlesak.

A motion to dissolve the interference, filed by Podłesak, was made on the ground that Kane had no right to make the claims of the issue; first, because of laches and estoppel; second, because the claims, all of which were taken from a reissued patent of Podlesak, when properly construed would not read on Kane's structure; and, third, because the terms of the claims if expanded in meaning in an attempt to read them on the Kane structure, would also read upon devices of the prior art. The Commissioner of Patents set this motion for hearing as to the second ground, but not as to the first and third, saying that the alleged delay in the presentation of the claims by Kane would not constitute ground for dissolving the interference, and that Podlesak, being a patentee, could not allege that the claims of the issue should be more narrowly construed than the plain terms would warrant.

The Law Examiner held that Kane had the right to make the claims and denied the motion for a dissolution. The Board of Examiners-in-Chief held on the authority of Rowntree v. Sloan (C. D., 1916, 192; 227 O. G., 744; 45 App. D. C., 207) that Kane was estopped from making the claims because of laches, stating that it was not necessary to pass upon the question of Kane's right to make the claims of the interference.

The Commissioner sustained the decision of the Examiners-inChief but on the ground that Kane was not entitled to make the claims. He called attention to the fact that the claims first appeared in the Podlesak reissue patent and that Kane filed his amendment including those claims within a month after the granting of the reissue patent; but he added that he was not disposed in the absence of experience with the rule laid down in Rowntree v. Sloan, supra, to acquiesce in the extension of it made by the Examiners-in-Chief by applying it to the present case.

Kane's original application was filed on February 2, 1910. His present application here in question and claimed to be a division thereof, was filed January 14, 1915. The application for Podlesak's original patent was filed April 15, 1912, and he obtained his patent March 4, 1913. On December 23, 1914, Podlesak applied for a reissue. A reissue patent was granted February 9, 1915. On April 19, 1915, Kane amended his alleged divisional application so as to make the claims of the present issue.

In Rowntree v. Sloan, supra, this court held that failure to make the claims of the issue on the part of one of the parties to an interference for three years after the grant of a patent to his adversary

estopped him from making the claims, because the life of the patent monopoly would be extended if the party seeking to make the claims should be finally successful, citing re Fritts. (C. D., 1916, 188; 227 O. G., 742; 45 App. D. C., 211.) Mr. Justice Robb for the court said that the claims should have been made promptly and at least within the time allowed for amendment after Office action.

We are of the opinion that the Examiners-in-Chief were right in holding that the present application comes within the rule of the Rowntree case. A reissue patent must be for the same invention as the original patent but the patentee may redescribe his invention, including however in the description and claims of the specifications only what was well described before or what was suggested or substantially indicated in his old specifications or drawings as properly belonged to the invention as actually made and perfected. (Marsh v. Seymour, C. D., 1878, 232; 13 O. G., 723; 97 U. S., 348.) The basis for the claims of the issue in this matter is therefore to be found in Podlesak's original patent of which Kane had notice from the date of its issue. Kane should therefore have moved promptly and not having done so is estopped to make the claims.

Were the case otherwise as to laches we should be inclined to affirm the decision of the Commissioner upon the grounds upon which he placed it; that is to say, because Kane has no right to make the claims. The Commissioner points out that both parties were claiming for improvements over the prior art and in slight particulars only but that Kane nowhere disclosed in his original or divisional application, until he came to make the claims of the Podlesak patent, that he was concerned with keeping the electrodes of the igniter normally separated or that he had invented what can be reasonably called an integral bracket.

The decision of the Commissioner is affirmed.

[Court of Appeals of the District of Columbia.]

CREVELING V. JEPSON.

Decided April 1, 1918.

256 O. G., 226; 47 App. D. C., 597.

1. INTERFERENCE-CONCURRENT DECISIONS OF THE PATENT OFFICE.

"The three tribunals of the Patent Office, all experts, concur in awarding priority to Jepson. Where this is so, especially in a case of this character, we have repeatedly held that we will not disturb the decision of the Patent Office unless manifest error has been committed.' (Lindmark v. Hodgkinson, C. D., 1908, 540; 137 O. G., 228; 31 App. D. C., 612; Murphy v. Meissner, C. D., 1905, 592; 114 O. G., 1830; 24 App. D. C., 260; Stone v. Pupin, C. D., 1902, 550; 100 O. G., 1113; 19 App. D. C., 396; Podlesak v. McInnerney, C. D., 1906, 558; 120 O. G., 2127; 26 App. D. C., 399.)”

2. SAME MEANING OF THE CLAIMS CLEAR-CONSIDERATION OF THE PRIOR ART NOT NECESSARY.

Where the Examiners-in-Chief in their decision said: "If their meaning is clear and includes Jepson, no consideration of the prior art need be given. If, however, there is no point to the claims when read on Jepson, we do not understand that we are concluded from a consideration of the prior art," Held that as they found, in effect, that according to the normal meanings of the words used the claims read on the applications of both parties it cannot be correctly said that they erred in not considering the prior art.

3. SAME MODIFICATION OF THE COMMISSIONER'S DECISION WITHOUT A REHEAR

64

ING.

Complaint is made because the Commissioner on the suggestion of Jepson modified his ruling so as to conform it to the holdings of the lower tribunals without first granting a rehearing. If his judgment was right, and we think it was, this irregularity, if it be one, is not of sufficient importance to constitute reversible error."

Mr. R. S. Blair, Mr. Morris Hirsch, and Mr. D. G. Haynes for the appellant.

Mr. Richard Eyre for the appellee.

SMYTH, C. J.:

Creveling appeals from a decision of the Commissioner of Patents awarding priority of invention to Jepson on all the claims of the issue, five in number. Three of those claims will sufficiently illustrate the character of the invention. They are:

1. The combination with a storage battery, a generator and regulating means therefor, of means for affecting the regulating means in response to voltage fluctuations, and means for affecting the regulating means in response to current fluctuations, said affecting means including means whereby the affecting means coöperate in the regulation of the generator.

2. The combination with a storage battery, a generator and regulating means therefor, of means for affecting the regulating means in response to voltage fluctuations, and means for affecting the regulating means in response to current fluctuations, said affecting means including electromagnetic means whereby the affecting means coöperate in the regulation of the generator.

3. The combination with a storage battery, a generator and regulating means therefor, of means for affecting the regulating means in response to voltage fluctuations, and means for affecting the regulating means in response to battery current fluctuations, said affecting means including electric means whereby the affecting means coöperate in the regulation of the generator.

The chief contention of Creveling is that Jepson cannot make the claims. The question thus presented is complicated and highly technical. The three tribunals of the Patent Office, all experts, concur in awarding priority to Jepson. Where this is so, especially in a case of this character, we have repeatedly held that we will not disturb the decision of the Patent Office "unless manifest error has been committed." (Lindmark v. Hodgkinson, C. D., 1908, 540; 137

O. G., 228; 31 App. D. C., 612; Murphy v. Meissner, C. D., 1905, 592; 114 O. G., 1830; 24 App. D. C., 260; Stone v. Pupin, C. D., 1902, 550; 100 O. G., 1113; 19 App. D. C., 396; Podlesak v. McInnerney, C. D., 1906, 538; 120 O. G., 2127; 26 App. D. C., 399.) No such error appears in this case.

Creveling urges in his brief and argued at the bar that the Patent Office. erred because it refused to consider the prior art when interpreting the claims of the issue. But the experts of that Office did not think it necessary to do so in order that they might understand the claims. With respect to the claims, the Examiners-in-Chief said:

If their meaning is clear and includes Jepson, no consideration of the prior art need be given. If, however, there is no point to the claims when read on Jepson, we do not understand that we are concluded from a consideration of the prior art.

They then found in effect that according to the normal meaning of the words used, the claims read on both Creveling and Jepson. In view of this, it cannot be correctly said that they erred in not considering the prior art.. Complaint is made because the Commissioner on the suggestion of Jepson modified his ruling so as to conform it to the holdings of the lower tribunals without first granting a rehearing. If his judgment was right, and we think it was, this irregularity, if it be one, is not of sufficient importance to constitute reversible error.

The decision of the Commissioner of Patents is affirmed and priority is awarded to Jepson as to all the counts of the issue. Affirmed.

[Court of Appeals of the District of Columbia.]

UNITED STATES, ex rel. INTERNATIONAL MONEY MACHINE COMPANY, v. NEWTON.

Decided March 4, 1918,

256 O. G., 227; 47 App. D. C., 449.

1. MANDAMUS-DECLARING OF AN INTERFERENCE CANNOT BE CONTROLLED BY. It is well settled that the duty imposed upon the Commissioner of Patents by section 4904, Revised Statutes, (Comp. Stat., 1916, sec. 9449,) to declare an interference involves the exercise of his judgment upon the facts presented and cannot be controlled by mandamus. (Ewing v. United States, C. D., 1917, 409; 238 O. G., 983; 244 U. S., 1; 37 Sup. Ct. Rep., 494.) 2. SAME QUESTION OF RES ADJUDICATA NOT REVIEWED ON.

Where an interference had been dissolved and a subsequent interference was declared between the same applications, Held that the question whether the decision in the original interference is res adjudicata as to the second interference cannot be raised on a petition for mandamus. It

may be urged before the various tribunals of the Patent Office and on appeal to the Court of Appeals of the District of Columbia. (Gold v. Gold,

C. D., 1910, 269; 150 O. G., 570; 34 App. D. C., 229.)

Mr. John F. Robb for the appellant.

Mr. Theodore A. Hostetler for the appellee.

VAN ORSDEL, J.:

This appeal is from a judgment of the Supreme Court of the District of Columbia denying a motion of appellant, International Money Machine Company, relator below, for judgment, and dismissing its petition asking for a writ of mandamus against the respondent, Commissioner of Patents, to compel him to vacate certain proceedings in the Patent Office in connection with a redeclared interference.

It appears that an interference containing three counts was declared between an application of one White and others and an application of one Oviatt. Relator, the International Money Machine Company, is the owner of the White application and the junior party in the interference. After the preliminary statements had been filed, relator moved to dissolve the interference on the ground that neither party had a right to make the claims, and for the further reason that the counts were unpatentable over the prior art.

On hearing, the Law Examiner granted the motion for dissolution, holding that neither party had a right to make the counts of the issue, and also holding that count 1 was unpatentable over the prior art. From this decision, Oviatt appealed to the Board of Examiners-in-Chief, who affirmed the decision. No appeal was taken from the decision of the Board. The dissolution became final, and the applications were returned to the Primary Examiner for ex parte prosecution, which included rejection of the claims of the issue in accordance with the decision of the Board of Examiners-inChief. Oviatt thereafter amended certain of his claims and added others, all of which were held by the Primary Examiner to be patentable over the prior art; and, as he regarded them readable upon the White application, they were suggested to the latter and were made by him. The Commissioner of Patents, acting under the provisions of section 4904 of the Revised Statutes, declared the interference here in question.

Relator seeks, by writ of mandamus, to compel the Commissioner of Patents to vacate the order declaring the interference and all proceedings in respect of the alleged interfering subject-matter of the applications of relator and the party Oviatt subsequent to the dissolution of the original interference.

It is well settled that the duty imposed upon the Commissioner of Patents by section 4904, Revised Statutes, (Comp. Stat., 1916, sec.