mitting an election in favor of the Ziherl application, and indirectly asking this court to void the election."

11. SAME-SAME-SAME.

any patent issued on the appealed application must bear Hession's name as inventor, but under the terms of the assignment agreements Z & W was under no obligation whatever to obtain a patent on that application. At the time of the election, therefore, Hession had no rights whatever with respect to an application or patent on the invention here involved and accordingly the election could not have deprived him of anything."

APPEAL from the Patent Office. Serial No. 312,951.

AFFIRMED.

Barnes, Kisselle, Raisch & Choate, John M. Kisselle (Alfonse J. D'Amico, of counsel) for appellant.

Clarence W. Moore (S. Wm. Cochran, of counsel) for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, A880ciate Judges, and Judge WILLIAM H. KIRKPATRICK, United States Senior District Judge for the Eastern District of Pennsylvania KIRKPATRICK, J., delivered the opinion of the court.

This is an appeal from the decision of the Patent Office Board of Appeals, affirming the rejection by the Primary Examiner, of all the claims of Hession's application No. 312,951 for a patent on an "Aerosol Apparatus." The construction and operation of the apparatus are not in issue and none of the appealed claims need be reproduced here. The following facts either are not in dispute or are clearly established:

Hession's application was filed October 3, 1952, and was assigned to Z & W Machine Products Inc., hereafter referred to as Z & W, by an instrument dated October 8, 1952, and duly recorded in the Patent Office. Previously, on August 26, 1952, an application for substantially the same invention was filed by one Frank A. Ziherl, which application was also assigned to Z & W, by an assignment duly recorded.

On December 31, 1954, the Patent Office called upon Z & W to make an election as between Hession and Ziherl and to limit the claims directed to common subject matter to one of those applications. As of January 4, 1955, Isler and Ornstein were the attorneys in charge of both applications and had the duty of taking the necessary steps to comply with Z & W's direction in this matter. According to a statement made by those attorneys in an amendment filed June 16, 1955, in the Hession application, they ascertained, early in 1955, that Ziherl had drawings dated March 20, 1952, disclosing the subject matter as to which the election was to be made while "In support of Hession's position as a possible first inventor, was his uncorroborated statement that he had numerous sketches and an actual model of the invention which

were prior to March 20, 1952, but which, after diligent search and investigation, he was unable to find and produce." It is to be noted that the attorneys' statement that Hession told them that he was unable to produce records "after diligent search" is in conflict with Hession's statement in an affidavit filed in his application to the effect that prior to April 1955 he "made no attempt and had no reason to produce proofs of inventorship." No attempt seems to have been made in the record to reconcile those statements.

On the basis of the investigation by the attorneys an election was made in favor of Ziherl and a patent was granted on his application on March 29, 1955, containing claims which are either identical with or not materially different from Hession's claims involved in the instant appeal.

It was the holding of the Examiner and the Board that this election is binding on Z & W and precludes the allowance of the appealed claims in the Hession application. That holding, somewhat loosely described by the Board as "the ground of double patenting," constitutes the basis of the rejection appealed from.

Hession's application has now been reassigned to him as the result of a series of transactions, the details of which are not important here. In connection with his appeal to the Board Hession presented an elaborate showing of documents and affidavits which, if interpreted most favorably to him, show that he made the invention here in issue as the result of an agreement made with Z & W August 15, 1951, by which he agreed to develop an aerosol device in exchange for a payment of $200 per week and expenses as well as certain payments for royalties; that his application was assigned to Z & W as a result of a further agreement dated October 8, 1952; that he disclosed the invention to Ziherl, who was an officer of Z & W, "long before" the filing of Ziherl's application; that Ziherl improperly appropriated Hession's ideas and embodied them in his application without notifying Hession, and that Hession had no knowledge of that application until the Ziherl patent issued at which time "Upon being confronted with the fraudulent activities resulting in the issuance of the Ziherl patent, Lewis Ziherl (brother of Frank A. Ziherl) and G. W. Walker, officers of Z & W, realized the seriousness of the situation and formally agreed to disclaim the Ziherl patent and reassign the Hession application to applicant (Hession)." This was done, and an offer has also been made to file a disclaimer limiting the term of any patent granted on Hession's application so that it will expire on the original expiration date of the Ziherl patent, thus avoiding any question of extension of monopoly. Also, Ziherl executed an affidavit in which he acknowledged that he was not the inventor of the subject matter set forth in the claims of the patent issued to him.

With reference to the two agreements between Hession and Z & W, since Hession states that Z & W refused to pay the royalties as provided under the first agreement but made no mention of the payment of $200 per week and expenses, we assume that such payments were made during the life of this agreement which was in force 14 months less one week. The second agreement among other considerations provided for payments totaling $5,000 to Hession and since Hession in his affidavit did not deny that he received this amount we assume, also, that he received it.

[1] We agree with the Solicitor that Hession, now having title to his invention and application by virtue of a reassignment from Z & W, has only such rights in the premises as Z & W had.

Except for a new ground of rejection raised for the first time by the Board, and which we find it unnecessary to consider, the simple question presented by the above rather unusual facts is whether the law would permit Z & W, the common assignee, having elected to pursue the Ziherl application rather than the Hession, which resulted in the issuance of the Ziherl patent, to now require the Patent Office to issue the Hession patent upon the disclaiming of the Ziherl patent.

Therefore, it seems to us that it is incumbent upon this court to decide the issues involved here on this basis only and we cannot properly concern ourselves with the fortunes or misfortunes of Hession who had assigned all his right, title and interest in the invention to Z&W for what we presume he thought was an adequate consideration. Even though there is no reason to believe that Hession was involved in the machinations of Frank Ziherl and the other officers of Z & W, he stands in the shoes of that corporation.

The law pertaining to the irrevocability of election of remedies generally has been stated in Corpus Juris Secundum, volume 28, page 1101, as follows:

An election once made between coexisting remedial rights which are inconsistent is not only final and irrevocable and cannot be withdrawn without due consent, even though it has not been acted upon by another to his detriment, but it is also conclusive and constitutes an absolute bar to any action, suit or proceeding based upon a remedial right inconsistent with that asserted by the election, or to the maintenance of a defense founded on such inconsistent right.

[2] While the election as to whether to obtain a patent on one or the other of two commonly owned applications may not, technically, be an election of remedies, it would appear that the same basic principles should govern in these two types of cases.

[3] The requirement by the Patent Office that a common assignee of two or more applications must eliminate conflicting claims from all but one of them is made in accordance with Patent Office rule 78 (b) and section 1101.01(b) of the Manual of Patent Examining Proce

1 It was terminated by the execution of the second agreement.

dure. The object of requiring such an election is to avoid the anomaly of an interference between applications controlled by a single interest. The requirement transfers the burden of determining priority in such a case from the Patent Office to the assignee, and the election takes the place of an award of priority in interference. Such an award cannot be set aside on the basis of a subsequent showing, no matter how convincing, that the party to whom priority was awarded was not in fact the first inventor. Blackford v. Wilder, 28 App. D.C. 535; In re Shimer, 21 CCPA 979, 69 F.2d 556, 21 USPQ 161; In re Rhodes, 23 CCPA 816, 80 F.2d 525, 28 USPQ 75; Josserand v. Taylor, 34 CCPA 824, 159 F.2d 249, 72 USPQ 357; In re Gregg, 44 CCPA 904, 244 F.2d 316, 113 USPQ 526.

The question of the revocability of elections by common assignees has been before this and other courts on several occasions.

In the first of these, In re Dunbar, 51 App. D.C. 251, 278 Fed. 334, the Court of Appeals of the District of Columbia held that a common assignee who had elected to take out a patent on one of its applications was precluded from obtaining a second patent for the same invention on another application. While extension of the monopoly was given as the principal reason for refusing the second patent, the court quoted with approval, the following statement of the Commissioner:

By taking out the Dyson patent, an election was made on the question of priority between Dyson and Dunbar, and the common assignee is just as much bound by that election as if an interference had been declared and priority decided in favor of Dyson.

The question as to the effect of an election by a common assignee first came before this court in In re Mann and Koppelman, 18 CCPA 1020, 47 F.2d 370, 8 USPQ 381. The decision of court holding the election to be binding was not based on any extension of monopoly, but on the ground that the election constituted a final determination of priority. This is clear from the following statement in the court's opinion:

Under this state of facts it is obvious that no interference should be declared between the applications of Koppelman and Cooper and of appellants because there were no adverse interests, the beneficiaries of both applications being the same parties. In so far as both applications covered the same invention, and in so far as the disclosures in each specification show claim by the respective applicants of being the first inventors thereof, since no interference could properly be declared because of lack of adverse interest, it became a matter of election by appellants whether they would take out the patent as original inventors upon their application or, as assignee of Koppelman and Cooper, upon the application filed by the latter. Having elected to take out a patent upon the application of Koppelman and Cooper it was in legal effect a concession of priority in Koppelman and Cooper of the same invention disclosed in the two applications *

The Rules of Practice in the Patent Office, when not inconsistent with the statutes from which they are derived, have the force of law and control the procedure in that Office. Land v. Dreyer, 33 CCPA 1108, 155 F. 2d 383, 69 USPQ 602; Anderson v. Walch, 33 CCPA 774, 152 F. 2d 975, 68 USPQ 215.

The question was again considered in In re Howard, 19 CCPA 759, 53 F.2d 896, 11 USPQ 280, in which a common assignee of applications of Howard and Peiler directed to generally similar subject matter had taken out a patent on the latter application. The court reaffirmed the doctrine of the Dunbar and Mann and Koppelman cases in the following language:

Because of the presence of such common assignee no interference could be declared between the two applications for the reasons stated in the cases of In re Dunbar, 51 App. D.C. 251 and In re Mann and Koppelman, 18 CCPA (Patents) 1020, 47 F.2d 370, and if appellant's assignee had included in the Peiler patent claim 25 of the application upon which it is based, or any claims corresponding to the claims here in issue, clearly the claims in issue should have been rejected even though Howard was in fact the first inventor. [Emphasis added.]

While the court found Howard's claims allowable, that action was not based on any modification of the doctrine of election but on the fact that the claims were "for a separate and distinct invention not embraced in the claims of the Peiler patent."

In the case of In re Willoughby, 24 CCPA 1033, 88 F. 2d 482, 33 USPQ 46, the court considered the Howard and Mann and Koppelman cases reaffirmed the doctrine of election as stated in the latter.

The question of election was again thoroughly considered in In re Fischel et al., 30 CCPA 1085, 136 F.2d 254, 58 USPQ 80. In that case a common assignee of two applications disclosing the same invention elected to take out a patent on one of them. Thereafter it was discovered that the other applicants, Fischel and Rieper were actually the first inventors, and claims to the common invention were inserted in their application, while the patent was reissued to eliminate such claims. It was alleged by appellants that no extension of monopoly would be involved in issuing a patent to Fischel et al., since the previously issued patent was void ab initio because the patentees were not the first inventors of the claimed subject matter.

In its opinion the court made the following statement with respect to the doctrine of election:

We think the true doctrine of election in patent cases is grounded upon one or more of three fundamental propositions. First, the application of the doctrine prevents two patents being issued for the same invention. Second, it prevents an avoidance of the determination of priority. Third, it prevents an extension of the monopoly.

The court found the first of these grounds to be avoided by the reissue of the patent without claims to the common subject matter, and it may be noted that the same result has been obtained in the instant case by the disclaimer of the Z & W patent.

In considering the second ground, we are faced with the necessity of understanding the phrase "it prevents an avoidance of the determina

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