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years; and then received an appointment as Assistant Examiner in the United States Patent Office on Septemher 1, 1894.

On appointment, he was assigned to Div. 28; where he has remained continuously for thirty years, becoming a Principal Examiner on April 1, 1910.

At the date of his appointment, Div. 28 examined the classes of Internal Combustion Engines (then termed Air and Gas Engines), Air and Gas Pumps, Ventilation, Refrigeration, Driers, Pneumatic Railways and Aerial Navigation

Owing to the activity in the Internal Combustion Engine art, the other classes were from time to time transferred to other divisions; so that now only the class of Internal Combustion Engines remains in said division.

This class, in the thirty years, has grown from about 300 patents to more than 17,000; not including numerous igniting and charge forming devices formerly classified in that art.


Harry C. Armstrong, Principal Examiner of Division 11, a native of Indiana, received his education in the graded and high schools of Worcester, Massachusetts, and in the Worcester Polytechnic Institute, from which he graduated in 1889 with the degree of B. S. in Mechanical Engineering.

After employment for four years as draftsman and machine designer by the Thomson-Houston Electrical Co. and by the Washburn and Moen Wire Co. of Worcester, Massachusetts, he entered the Patent Office in 1894 and served through the various grades of assistant examiner in Division 3 for eighteen years, examining the classes of Metallurgy, Annealing and Tempering and Coating with Metal.

While an assistant examiner he was detailed to prepare the Patent Office exhibits for and represent the Office at both the Jamestown Exposition, at Norfolk, anid the Alaska-Yukon-Pacific Exposition, at Seattle.

In 1912 Mr. Armstrong was made a Principal Examiner and placed in charge of Division 11, examining at the present time Boot and Shoe Making; Boots, Shoes and Leggings; Button, Eyelet and Rivet Setting; Leather Manufactures; Nailing and Stapling; Harness; Cutting and Punching Sheets and Bars; Driven, Headed and Screw Threaded Fastenings; and Whips and Whip Apparatus.



The material of this paper was originally prepared as two chapters for an outline of ex parte practice, which will probably be in press when this issue of the Journal appears. The outline, however, consists almost entirely of an objective statement of what the practice is, whereas the subject matter of this paper is so unsettled, that a large part of the paper necessarily deals with tendencies rather than established rules. For this reason separate publication seemed preferable.

Prior ex parte determination. If an applicant for patent has been adjudicated upon one application, nor entitled to claims, it would seem on principle, that he might be rejected in a second application as barred. Barratt v. Duell, 14 App. D. C. 255; 87 0. G. 1075; 1899 C. D). 320. Fay v. Duell, 15 App. D. C. 515; 90 0. G. 1157; 1900 C. D. 232. Edison, 30 App. D. C. 321; 133 (). G. 1190, 1908 C. D. 327. The Patent Office, however, seemingly does not apply this rule very seriously, generally giving an independent action on the merits. The authorities are reviewed in a paper entitled “Res adjudicata as a ground of rejection”, read before the examining corps March 18, 1915, by William R. Ballard, and separately published that year.

Interference. If two applicants become involved in interference, they ought, ordinarily, to contest all related subjects matter at once. The fairness of such a rule is manifest, and was clearly pointed out in one of the early reported cases. Harlow v. Guernsey, 1875 C. D.

47. In a simple case the rule would not often be disputed, but the situations that arise are by no means simple, and anyone who reads the opinions which have been written by the office tribunals and the courts is likely to feel that the entire subject is hopelessly confused. Certainly the decisions are disconcerting and probably some of them cannot be reconciled either with some of the others or with principle. It is believed, however, that an examination of the principles involved will render the subject reasonably clear, and that nearly all the decisions can be reconciled with the principles, even tho the reasons given are sometimes unsatisfactory.

A paper on the subject entitled “Res judicata” was read before the examining corps April 22, 1915, by Fairfax Bayard, and separately published that year. This paper analyzes decisions of the courts involving other than patent disputes, and it covers most of the patent cases prior to that date; at the outset, however, it sets aside the distinction between what are herein called "bar by judgment” and res judicata.This distinction is hereinafter treated as basic.

No second interferences. Fifteen years ago the attitude of the Court of Appeals of the District of Columbia seemed to be to permit no second interferences between the same parties on the same disclosure. Blackford v. Wilder, 25 App. D. C. 535; 127 0. G. 1255; 1907 C. D. 491. Horine v. Wende, 29 App. D. C. 415; 129 O. G. 2858; 1907 C. D. 615. U. S. ex rel Newcomb v. Moore, 30 App. D. C. 464; 133 0. G. 1680; 1908 C. D. 332. Carroll v. Hallwood. 31 App. D. C. 165; 135 0. G. 896; 1908 C. D. 441. This effort to simplify things soon broke down. Gold v. Gold, 34 App. D. C. 229; 150 0. G. 570; 1910 C. D. 269. Moore v. U. S. ex rel Colburn, 40 App. D. C. 201; 191 0. G. 293; 1913 C. D. 398. Barclay v. Carter, 41 App. D. C. 240; 198 0. G. 238; 1914 C. D. 97. Rotter v. Hodgkinson, 43 App. D. C. 254; 213 0. G. 1118; 1915 C. D. 103. Litle v. Armstrong, 232 0. G. 935 & 938; 1916 C. D. 64 and 72. Curtiss, 46 App. D. C. 183; 238 0. G. 650; 1917 C. D. 142. Reed v. Cropp, 239 Fed. 869; 240 0. G. 1449;


1917 C. D. 321 (C. C. A.—7). Campbell v. Dyson v. Dunlam, 242 (). G. 253; 1917 C. D. 56. Martin, 48 App. D. C.

257 0. G. 408; 1918 C. D. 213. Clements v. Kirby, 274 Fed. 575; 292 0. G. 879; 1921 C. D. 319 (C. C. A.-6). One case belongs with the earlier group, altho the date when it was rendered falls within the period of the later group. Sutton v. Wentworth, 41 App. D. C. 582; 204 (). G. 320; 1914 C. D. 210.

More recently a similar effort, thus far restricted to cases in which the first interference was dissolvei, has been in evidence, particularly in office decisions. Capen, 43 App. D. C. 342; 214 0. G. 685; 1915 C. D. 115. White etc. v. Ovaitt, 308 0. G. 449; 1923 C. D. 18. Greer v. Simon, 308 0. G. 657 ; 1923 C. D. 24. Longtin v. Trudel, etc., 317 0. G. 758; 1923 C. D. 136.

The trend of the cases of fifteen years ago was that the successful party won not only the counts, but all the conimon subject matter. The trend of the recent office cases just mentioned on the effect of dissolution, is that any common subject matter which the parties fail to claim is lost to both of them. What attitude will be taken when a stranger to the first interference subsequently claims to be the inventor of this unclaimed common subject matter, remains to be seen.

Implications of this rule. If the parties lose unclaimed common subject matter by failing to claim it prior to dissolution, it would seem to follow that they lose it by failing to claim it prior to judgment on the merits. The writer's personal opinion is that such a rule would best serve the public interest in prompt conclusion of prosecutions within the office. But the rule is so drastic that serious modification of it is almost certain to develop. In the belief that this modification will come, and that it will come along the line of decisions which modified Blackford v. Wilder, this paper is published.

Bar by judgment and res judicata. It is necessary to distinguish between two rules of law that are quite different, but have not always been kept clearly separate in some of the interference decisions. One of these rules is

sometimes called "bar by judgment”, and the other is sometimes called res judicata. Various names, however, are used, and frequently the same name is used for both rules. Simply for convenience these particular names will be accepted here. Following Henry Campbell Black, in 23 Cyclopedia of Law & Procedure, the rules (as far as material to interference proceedings) will be stated, after which his distinction betwen them will be added. The same distinction is made by Melville E. Bigelow in "A treatise on the law of estoppel”, 1913, pages 209-211.

Bar by judgment. A judgment on the merits is a bar to any further suit between the same parties or their privies, upon the same cause of action. This is bar by judgment, or bar by former recovery. 23 Cyc. 1106. [f the issue is the same in substance, an immateriai difference in words will not prevent the application of the kar.

Res judicata. A fact or question which was actually and directly in issue in a former suit, and was there judicially passed upon and determined, is conclusively settled by the judgment therein, as far as concerns the parties to that action and persons in privity with them, and cannot be again litigated in any future action between such parties or privies, even upon a different cause of action. This is res judicata. 23 Cyc. 1215.

Distinction between these rules. The distinction is that by the first rule a former judgment between the same parties is a bar to the maintenance of the second action only when the causes of action in the two suits are identical in substance, while by the second rule it will be conclusive and final as to any issue actually litigated anů determined in the former suit, and coming again in question in the second suit, altho the latter is brought upon an entirely different cause of action. 23 Cyc. 1216. The distinction between these two rules of law is believed to be vital to a clear understanding of questions of this character arising out of interference proceedings. The Supreme Court, reviewing earlier authorities has clearly pointed out this distinction, stating that a judgment upon

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