is noted that the margin of the cap shown in Fig. 1 of Swan's drawings is longer than the blade and has more of excess length than is true of Exhibit No. 3 with relation to blade, Exhibit No. 4. This question has no bearing on Swan's right to make a claim in his application since figures 10, 13 and 15 of Swan's case disclose a structure wherein the corners of the cap overhang to a considerable extent the cut-out corners of the blade.

So far as set forth in Swan's application there was no occasion for any overhang cap in Figs. 1 to 9 and we believe Exhibit 3 with blade, Exhibit No. 4, was merely along the line of demonstrating the diagonal guiding discs and guard lugs at the ends of the cutting edge of the blade. As noted by the Examiner there was therefore no need in Exhibit No. 3 for any overhang of the cap and as further found by the Examiner, Swan's proofs fail to disclose any conception of this essential feature of the count or any disclosure of it to others in connection with Exhibit No. 3 and the testimony concerning it does not serve to support any claim for Swan in connection with the count of this interference.

The board also held that the razor, Exhibit 7, and the blade, Exhibit 3, did not constitute a combination which amounted to reduction to practice of the details of the count in interference "A". This holding, as was the aforesaid holding as to Exhibits 3 and 4, was followed in awarding priority of invention of count 2 in interference "C" to Thompson. The board said:

The cap in Exhibit No. 7 appears so very loosely mounted on the other parts, that if a corner of it should have been bent * * * It appears that it would have resulted in an objectionable condition of blade which would have been inoperative or dangerous to shave with. *

We are not in accord with the views of the board as to its finding as to the two razors and the respective blades which are shown to have been used together. They satisfy all the provisions of the counts including the reentrant recesses located at the corners of the blades, as well as the provision "to span the corresponding cap corner and provide a clearance space of sufficient area to receive said cap corner". The shoulders or guard lugs appear on the razor exhibits, and in our judgment perform the exact function which is claimed for the cap corners and cut out blade corners in the Thompson structure and as is called for by the counts.

[2] At this point we think it important to consider the contentions of the party Thompson in this court. While Thompson makes certain contentions similar to the findings of the board with reference to the structure not meeting the requirements of the counts, his chief contention is that Swan did not attempt to solve the same problem which Thompson claims to have solved, and that he had no conception of so constructing a razor blade and guard that the reentrant recesses and cap corners would prevent the undesirable results which would flow from a bent cap corner. Thompson urges that curing this defect was of vast importance to the Gil

lette Safety Razor Company, and he testified that one night he awoke from a sound sleep and the idea came into his head that the solution of his problem was to cut a recess in each corner of the blade so that damaged cap corners would not come in contact with the blade. He then conceived the notion of thickening the cap corners. It is not denied that this was long after he had seen Swan's razor.

Swan claims that Thompson obtained the invention from him. The tribunals below found to the contrary and it is not necessary, in view of our conclusion that Swan was the first inventor of the subject matter of the counts here involved, to pass upon this question, although it is not thought erroneous to state that if Swan's record proofs are to be accepted as true, the first notion of a reentrant recessed corner razor blade must have come to Thompson when he saw this identical feature in the Swan construction in 1927. It is entirely probable that if Thompson saw the Swan structure he did not realize that it solved the problem which he stated had confronted him throughout the years and it is also probable that he at no time before the night when he states the conception came to him realized that the Swan structure would be helpful in the solution of his said problem.

Swan having completed the structure embodying the issue of the counts and disclosed it to others and found it to be useful for any purpose should not be deprived of the benefits flowing therefrom because another entering the field later has found that additional beneficial results could be obtained from it. Weis v. Weis v. Woodman, 20 C. C. P. A. (Patents) 1211, 1218, 65 F. (2d) 274; In re Smith, 17 C. C. P. A. (Patents) 644, 36 F. (2d) 302. The law in this respect is quite analogous to that declared in numerous cases to the effect that one cannot claim a patentable monopoly for an old process because with it he has been enabled to produce a new article. Brown et al. v. Piper, 91 U. S. 37; Lovell Manufacturing Co. v. Cary, 147 U. S. 623; Arlington Mfg. Co. v. Celluloid Co., 97 Fed. 91; In re Braselton, 51 App. D. C. 31, 273 Fed. 759. The courts have frequently stated that a patentee is entitled to make every use of which his patent is susceptible whether this use was known or unknown to him. In re Downs et al., 18 C. C. P. A. (Patents) 803, 807, 45 F. (2d) 251; In re Metzger, 18 C. C. P. A. (Patents) 808, 811, 45 F. (2d) 918; Braren v. Horner, 18 C. C. P. A. (Patents) 971, 982, 47 F. (2d) 358; In re Abrahamsen, 21 C. C. P. A. (Patents) 828, 831, 68 F. (2d) 569. We think the facts and the language used by this court in Weis v. Woodman, supra, are particularly applicable. We quote:

In view of the foregoing, we are unable to perceive that appellant had any other conception than that of a particular function accomplished by a structure made pursuant to the suggestion of appellee, which function may or may not have been known to appellee. We accept as a fact that appellant was the first to discover the utility of cushioned edges to insure effective gripping by the frame members of the screen.

Mere discovery of an additional function in a device invented by another does not constitute invention. In re Smith, 17 C. C. P. A. (Patents) 644, 36 F. (2d) 302.

We think that the same facts which the board held showed Swan's reduction to practice of the issue involved in the counts awarded to Swan also showed reduction to practice of the invention of the counts awarded to Thompson. It is freely admitted on both sides in the argument here that all four counts involved in these three interferences concern only one invention, and both sides frankly stated that Swan is entitled to an award of priority of all the counts or none of them.

While, as above stated, the record shows that some of the exhibits Swan brought from England were tested, shaved with, and shown to others, it is not shown that he either bent a guard corner down or tested the recessed blade with a bent-down corner in order to ascertain if the blade would be flexed. In view of the obvious fact that the blades in the exhibits referred to could not come in contact with a corner, if bent, it would appear to be wholly unnecessary to make this character of test, and, therefore, actual testing of the exhibits to determine whether or not the blade would flex against a bent corner was unnecessary.

[3] Thompson argues that Swan had abandoned his British applications and that he, through his brother, Arthur E. Swan, who had access to Thompson's file wrapper, obtained the terms of the counts involved here and was prompted from that fact to eventually claim the invention. It is not pointed out very definitely just what effect this alleged situation may properly have on the decision of the issue involved, but we think it is probably pressed with a view of urging the applicability of the doctrine akin to equitable estoppel announced in Mason v. Hepburn, 13 App. D. C. 86.

Thompson contends that the record shows that Swan neglected the invention in issue in favor of other enterprises and that he was not concerned with this invention, even the diagonal stroke feature of his razor, until he learned of Thompson's success through certain advertisements of the Gillette Safety Razor Company.

The Board of Appeals in its decision awarding Swan the count in interference "B" and count 1 of interference "C" summarily dismissed Thompson's contention with reference to equitable estoppel

by stating (in interference "B") that it had not been established that Swan's activities amounted to an abandoned experiment and that there was no concealment or suppression on the part of Swan. We agree with this conclusion. The facts in this case afford no proper basis for the application of the doctrine akin to equitable estoppel which deprives the first inventor of his right to a patent.

For the reasons heretofore assigned, we conclude that the Board of Appeals was in error in affirming the action of the Examiner of Interferences in awarding priority of invention in the count in interference "A" and count 2 of interference "C" to Thompson, and the decisions appealed from in Patent Appeal No. 3542 and Patent Appeal No. 3543 are reversed. It correctly awarded priority to Swan in the count in interference "B" and count 1 in interference "C", and the decisions appealed from in Patent Appeal No. 3545 and Patent Appeal No. 3546 are affirmed.

464 O. G. 712; 23 C. C. P. A. 816; 80 F. (2d) 525

IN RE RHODES (No. 3538)

PATENTS-PATENTABILITY-ESTOPPEL.

In view of the facts of record, appellant is estopped from presenting the claims before the court because of his failure to file a motion under Rule 109, requesting that the appealed claims be placed in interference.

United States Court of Customs and Patent Appeals, January 6,

1936

APPEAL from Patent Office, Serial No. 412198

[Affirmed.]

E. Hume Talbert for appellant.

R. F. Whitehead (Howard S. Miller of counsel) for the Commissioner of Patents.

[Oral argument November 8, 1935, by Mr. Miller; submitted on brief by appellant] Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

HATFIELD, Judge, delivered the opinion of the court:

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting appealed claims 14 to 17, inclusive, in appellant's application for a patent for an alleged invention relating to an agricultural implement for marking the ground for irrigation purposes.

The marking plows are designed to be raised or lowered as desired by the operator, and they may be laterally adjusted, but such adjustment depends upon the lateral adjustment of the wheels of the implement.

14. A marker of the character described comprising a pair of rearwardly extending U-shaped frame members of materially different spreads, said frame members being secured together with the narrower centrally disposed in the wider, so that the legs of the two lie in spaced relation, a shaft spanning the legs of said frame members, wheels positioned on said shaft between the corresponding legs of said frame members, ground working tools, rearwardly directed carriers for swingingly supporting said tools with said shaft as the axis of swinging movement, means for elevating and lowering said carriers, and means for adjusting the positions of the ground working tools in the direction of the axis of the shaft.

It appears from the record that the application here involved was filed December 6, 1929; that thereafter, on April 8, 1931, appellant filed application serial No. 528,648, for an improvement on the device disclosed in the involved application; and that an interference was declared between the latter application and an application of Bertorello, serial No. 456,164.

The claim constituting the count in that interference originated in Bertorello's application, and was copied by appellant for interference purposes. It read:

A marker of the character described comprising a pair of rearwardly extending U-shaped frame members, a transversely disposed shaft secured to said frame members, adjustably mounted wheels positioned on said shaft between said frame members, a marker frame supporting member secured to said shaft and extending rearwardly thereof, a segmental marker frame adjustably secured to said supporting member, means carried by one of said U-shaped frame members whereby to adjustably swing said supporting member, a marking frame, and an adjustably secured spreading member secured to said marker frame and positioned rearwardly thereof.

A final decision was entered in that case awarding priority of invention to the senior party, Bertorello.

It appears from the record, and it is conceded in the brief of counsel for appellant, that Bertorello's application involved in the interference proceeding, and his patent No. 1,916,250 subsequently issued thereon, disclosed in the drawings a structure upon which the appealed claims read, although the involved invention was not claimed therein. It further appears that, although appellant's involved application was being prosecuted in the Patent Office during the pendency of the interference proceeding, he failed to file a motion, as he might have done under rule 109 of the Rules of Practice, United States Patent Office, requesting that that application, and claims to