reference. The case of Ex parte Chapman, 1924 C. D. 143, is authority for the doctrine that the claims of an applicant's patent can be used as prior art for another of his applications, whether the application for the already-granted patent was filed before or after the filing of the application for the second patent. (In the present case the application for the reference patent was filed before the present application). The case of Ex parte Hammond and Hammond, 1922 C. D. 15, is cited in the above case as holding that a claim in a later application, to be patentable, must define something in addition to and which involves invention over what is covered by the patent and the prior art.

Applying the above principle to the rejection of the appealed claims, the examiner then said:

* To form metal stock of non-tubular section from the metal tube disclosed and claimed by the reference is not invention. Having the metal, with the desired grain and crystal structure, in the form of a tube, it is obvious to cut out a portion of the side wall of the tube to form a solid round rod or any desired shape if such a shape having that crystal structure is desired.

Before the Board of Appeals the applicant cited the following cases which he also cites and relies upon in this court: Traitel Marble Co. v. U. T. Hungerford Brass & Copper Co., 22 F. (2d) 259, and Driver-Harris Co. v. Hardite Metals, Inc., 28 F. (2d) 413, as authority for his contention that the claims of his instant application were not required to be for a separate invention in order to be allowable. The Board of Appeals discussed those cases and held them inapplicable, and also called attention to this court's decision in In re Fischer, 19 C. C. P. A. (Patents) 1077, 57 F. (2d) 369. The latter case the board did not discuss. The board concluded that:

* It certainly can be of no patentable significance whether this metal structure be in stock which is tubular or solid. The claims of the application are directly readable on a portion only of the tubes claimed in the patent and some of the application claims are so broadly drawn as to be anticipated by either portion of the tube when divided along its longitudinal axis into a plurality of pieces.

While our decision in In re Fischer, supra, in some respects has a bearing on the issue here presented, the situation there was somewhat different from the one presented here, and that case can hardly be suggested as a complete answer to appellant's contentions here made.

We agree, however, with the Patent Office Tribunals that appellant is here "claiming nothing more than the same invention in substance as is claimed in the patent" and that their view of the inapplicability of the first two above-cited cases is the correct one. It certainly would not require invention to split and lay open appellant's metal tube. The invention cannot rest in the mere form of the solid metal stock, whether in plates, bars, rods, or other forms. The desirable crystalline properties of the metal tubes which appellant made by his method and apparatus were the useful result of his invention for

which he was allowed a patent. It seems clear to us that no separate invention could possibly rest in discovering that the same crystalline structure was found in rods or other forms of solid metal stock when produced by appellant's patented rolling method. The statement above quoted from appellant's application at bar would seem to confirm this view.

We agree with the decision of the board that the examiner properly rejected all the claims of appellant's application for the reasons stated by him and by the board. The decision of the Board of Appeals is affirmed.

471 O. G. 11; 23 C. C. P. A. 1074; 82 F. (2d) 817

PATENTS-INTERFERENCE

KNIGHT V. KING (No. 3606)

PUBLIC USE PROCEEDING.

Appellant sought to have the case reopened after judgment for the purpose of enabling him to prove publication and public use of the invention more than two years prior to the time that appellee copied appellant's claims. Had these facts been proven, they could not have affected appellee's right to make the claims or to contest with appellant the question of priority. His motion was properly denied.

United States Court of Customs and Patent Appeals, April 20, 1936 APPEAL from Patent Office, Interference No. 66442

[Affirmed.]

A. D. Salinger, Harry E. Dunham, and Fairfax Bayard for appellant.

George H. Strickland for appellee.

[Oral argument March 5, 1936, by Mr. Salinger and Mr. Strickland]

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

GARRETT, Judge, delivered the opinion of the court:

This is an interference proceeding in which the party Knight has appealed to this court from a decision of the Board of Appeals of the United States Patent Office affirming the decision of the Examiner of Interferences awarding priority to the party King.

On April 12, 1927, Knight filed an application, Serial No. 183,205, in the United States Patent Office, seeking patent on "an improved refrigerator cabinet." During prosecution of the application it was several times amended. It is asserted by counsel for King that the first claim offered by Knight which King was entitled to make was

offered November 20, 1930. Under the facts of the case we do not regard this date as being material. The application matured into patent No. 1,810,615 on June 16, 1931, containing the following as claim 12:

12. A refrigerator wall construction having an inner metal wall member, an outer wall member spaced therefrom, and another wall member of a nonmetallic non-hydroscopic material having low heat conductivity and extending between the inner and outer wall members to form a closure for the space between said wall members.

The application of King was filed February 6, 1926. Into it, on August 3, 1932, there was copied, for the purpose of interference, the claim so allowed in the patent to Knight, and, on June 8, 1933, the interference was declared with said claim constituting the sole count of the issue.

The preliminary statement of Knight was found by the Examiner of Interferences to have alleged a date of conception subsequent to King's filing date, and Knight was served with notice to show cause why judgment upon the record should not be entered against him. In response to such notice Knight presented a motion from which we quote the following:

Now comes the party Knight by his attorney and in response to the order to show cause moves that times be set to take testimony in the above entitled interference in order to prove that the subject matter of this interference was published in a printed publication and was in public use more than two years prior to the time that the party King first made any claims in his application to the subject matter of this interference, unless the party King admits such publication and public use.

The object of taking such testimony is to show that said party King is estopped to make the claim constituting the issue of the interference under the doctrine of Wintroath vs. Chapman [sic], 252 U. S. 126, and Webster vs. Splitdorf, 264 U. S. 463.

Said party Knight further moves that after the taking of said testimony and hearing thereon, a judgment be entered either (1) dissolving the interference upon the facts hereinabove set forth for the reason that King is estopped to obtain a patent upon the invention in issue regardless of whether Knight is entitled to his patent thereon as prior inventor or (2) that judgment be entered awarding priority to Knight upon such facts for the reason that King is estopped to assert his alleged inventorship of said invention.

The relief sought of this court is expressed in the last paragraph of Knight's petition of appeal as follows:

Wherefore your petitioner prays that said appeal may be heard upon and for the reasons assigned therefor to the Commissioner, as aforesaid, and that said appeal may be determined and the decision of the Commissioner revised and reversed, and that the Commissioner be instructed that there can be no legal award of priority until your petitioner be given an opportunity to establish by testimony the facts set forth in your petitioner's motion aforesaid and in the affidavits of record in your petitioner's application which are referred to in said motion.

In view of this prayer, it seems proper at this time to direct attention to the specific matters contained in Knight's motion, upon which he sought to take testimony. As we interpret the first paragraph of the motion quoted above, he sought to take testimony for the purpose of establishing only that more than two years before King made any claims to the subject matter of the interference, such subject matter had been (1) published in a printed publication and (2) in public use. It is not questioned that King's original disclosure supports the count.

In support of Knight's motion it was alleged that his invention was described in a paper appearing in a publication issued in August, 1929; that an affidavit of Knight, filed with an amendment made May 31, 1928, alleged that up to that time more than 26,000 "boxes" embodying his invention had been built, and that an affidavit of oue Stevenson, an employee of General Electric Company, to whom Knight's patent stands assigned, filed with an amendment of April 25, 1930, alleged that up to that time more than 400,000 refrigerator cabinets had been built in accordance with Knight's invention and had "given entire satisfaction."

The affidavits so alluded to are contained in the record before us. It is pointed out on behalf of Knight that King did not copy the claim until about thirteen and one-half months after the issuance of the Knight patent, and it is alleged that this delay, when considered in the light of the facts that Knight proposed to prove, "was unreasonable and constitutes laches creating an estoppel against King, of that type upheld by the Supreme Court in Chapman v. Wintroath, 252 U. S. 126." Therefore, the action of the Board of Appeals in affirming the decision of the Examiner of Interferences denying the motion to take proof is assigned as error in the appeal to us, and this assignment seems to us to be the only assignment upon which, in the state of the pleadings, there is any occasion for this court to pass.

The case of Chapman et al. v. Wintroath, supra, is so familiar that no extended review of it is deemed necessary here.

Briefly, it may be said that about twenty months after the issuance of a patent to Wintroath the Chapmans filed a divisional application, copying the claims of the patent; that an interference was declared; that Wintroath's preliminary statement alleged a date of conception subsequent to the filing date of the Chapman's original application; that Wintroath filed a motion for judgment in his favor on the record, alleging, in the words of the Supreme Court, "that conduct on the part of the Chapmans was shown, which estopped them from making the claims involved in the interference and which amounted to an abandonment of any rights in respect thereto which they may once have had"; that the Chapmans contended that such

motion for judgment could not properly be allowed until an opportunity had been granted for the introduction of evidence; that the examiner without hearing any evidence entered judgment in favor of Wintroath, holding that the delay of the Chapmans for more than one year constituted equitable laches which estopped them from making the claims, basing his decision upon Rowntree v. Sloan, 45 App. D. C. 207; that his decision was affirmed by the Examiner in Chief but reversed by the Commissioner of Patents, and that the Court of Appeals of the District of Columbia reversed the commis

sioner.

The Supreme Court granted certiorari and upon consideration of the case reversed the Court of Appeals. In the course of its opinion, the Supreme Court said:

There is no suggestion in the record that the original application of the Chapmans was not prosecuted strictly as required by the statutes and the rules of the Patent Office and therefore, it is settled, their rights may not be denied or diminished on the ground that such delay may have been prejudicial to either public or private interests. "A party seeking a right under the patent statutes may avail himself of all their provisions, and the courts may not deny him the benefit of a single one. These are questions not of natural but of purely statutory right. Congress, instead of fixing seventeen, had the power to fix thirty years as the life of a patent. No court can disregard any statutory provisions in respect to these matters on the ground that in its judgment they are unwise or prejudicial to the interests of the public." United States v. American Bell Telephone Co., 167 U. S. 224, 247.

The Supreme Court further said:

As has been pointed out, the Examiner of Interferences did not permit the introduction of any evidence with respect to laches or abandonment and the Court of Appeals rests its judgment, as he did, wholly upon the delay of the Chapmans in filing their divisional application for more than one year after the Wintroath patent was issued, as this appeared "on the face of the record." While not intending to intimate that there may not be abandonment which might bar an application within the two-year period allowed for filing, yet upon this discussion of the statutes and decisions, we cannot doubt that upon the case disclosed in this record, the Chapmans were within their legal rights in filing their divisional application at any time within two years after the publication of the Wintroath patent,

*

When the facts in the case at bar are considered in the light of the Chapman et al v. Wintroath decision, supra, it seems to us quite clear that the contentions here made on behalf of the party Knight are untenable.

Knight did not allege, nor did he ask to prove, that King's application, to quote from the decision of the Supreme Court, supra, "was not prosecuted strictly as required by the statutes and the rules of the Patent Office." No conduct on the part of King himself is referred to, except delay. All that Knight asked to be permitted to prove was publication and public use of the invention more than two years prior to the time when King copied the claim.