application at bar. Other broad claims also reading upon Butler and Challis and calling for the same invention as is herein involved were also cancelled by Day after they had been rejected upon Butler and Challis.

Appellant contends, and we agree with such contention, that this statement of facts warrants the conclusion that Day there acknowledged that, as to the invention here involved, Butler and Challis were properly regarded as prior art to him, and that he by such conduct conceded that he was not the first inventor of such subject matter.

The record discloses that the above contentions as to why estoppel should not apply were made by appellant before the Patent Office Tribunals, both of which refer to certain phases of them in their decisions. In the decision of the Board of Appeals we find the following:

It is our opinion that under the circumstances presented by this record we cannot accept applicant's contended excuse along this line and that we are not at liberty under the practice to now grant to a losing party on priority broad claims based upon common structure which would dominate the claims awarded to the winning party on a contest on priority as in Interference No. 58,260. We do not overlook the fact that the filing date of the present case was quite early and even earlier than the date of conception alleged by either Day or Evans but it must be noted that the counts of the issue of Interference No. 58,260 were at the time of making such preliminary statements, and in fact throughout the interference, relatively quite specific and we think preliminary statements based upon the specific structure is not conclusive of what might have been proven by Day or Long on more comprehensive claims. This uncertainty is believed to demonstrate and establish the necessity or burden on applicant to have presented broader claims in order that priority on such broad claims could have been contested as between Day or Evans and applicant. Applicant did not offer to contest broader claims under the provisions of Rule 109 in that interference by bringing any motion to include such broader claims. It is not believed that applicant is excused by the fact that Evans unsuccessfully endeavored to introduce slightly broader claims in a motion under Rule 109. Where as in this case applicant was involved in several interferences it is believed that it would lead to uncertainty and confusion in practice to say that he might be excused from the application of Rule 109 in certain interferences of the group because as a matter of opinion or speculation it was assumed that the other parties of that group could not win on the counts broader than those involved in any particular companion interference. We believe it is plain that in case of a multiplicity of interferences Rule 109 would be definitely applicable to each one independently, in order that priority might be definitely contested as to each and every party involved. [Italics ours]

It may be noted further that none of the parties, including of course applicant, cared to contest, as to the broader claims presented by Evans, to final determination in Interference No. 58,260. The proposed counts were denied by the Examiner of Interferences and no appeal was taken. While the particular proposed counts were denied on the ground of non-patentability over a certain patent to Butler, No. 1,532,121, which is of later date than the present application of Long it is not apparent but that other claims might

possibly have been drawn to avoid Butler and which would have been broader than the counts of Interference No. 58,260 and still readable upon all of the parties. It is however apparent that in such case Evans and Day might have declared earlier dates.

In this court, the Solicitor for the Patent Office contends that, regardless of whether or not the basis for an equitable estoppel exists, it is the settled law that unless appellant, under rule 109, moved to add to the interference claims to the broad subject matter now claimed, the same being broader than the issue of the interference, he is not now entitled to their allowance in the instant application, and relies largely upon In re Rhodes, 23 C. C. P. A. (Patents) 816, 80 F. (2d) 525. The solicitor points out certain distinctions which exist between the instant case and the Rhodes case, but contends that the distinctions are not material and that the holding of the board that appellant was not entitled to the claims for the reasons by it stated is abundantly supported by the authorities.

We know of no case on all fours with the case at bar either in the facts or the principles involved. It would be needless to cite authority for the proposition that in the Patent Office there has been a gradual extension of the so-called doctrine of estoppel. In some of its phases it has been approved by the courts, and in others the application of the doctrine has been rejected. It is well-settled, however, that if a party to an interference fails to submit subject matter claimed in the application involved or in other applications belonging to him for a contest of priority where such subject matter is claimed by his adversary or adversaries, he is afterwards barred from obtaining claims not so submitted or claims broader than the issue of the interference. It furthermore has been held that it is not only his duty to bring forward such subject matter when the matter is claimed by his adversary, but that it is also his duty to do so when such subject matter is clearly disclosed by his adversary and not claimed. The latter was our holding, in approving the action of the Patent Office, in In re Rhodes, supra.

We know of no case, however, where a party losing narrow claims in an interference has been denied broad claims because he failed to present the same in an interference where the subject matter was not patentable to any one of the other parties, and where they, in claiming an improvement over the broad invention either disclaimed the broad invention or by their conduct clearly conceded that in any event they could not be regarded as its first inventor.

Charles W. Rivise, in his work on Interference Practice, at page 6, says:

§ 6. INVENTION Must Be PATENTABLE TO BOTH PARTIES.

An interference will not be instituted unless the invention is patentable to both parties. Hence, an interference will not be declared if a statutory

bar such as public use, etc., exists against the grant of a patent to either party. Nor will an interference be declared if the application of one party is fatally defective. Thus, in Ex parte Reagan, 1902 C. D. 40; 98 O. G. 1038, an interference was refused because the application of one of the parties disclosed an inoperative device. Likewise, in the case of In re Crane, 1903 C. D. 332; 106 O. G. 999, an interference was not instituted because one of the applications, though purporting to be for a joint invention, was signed by only one of the inventors. Crane alleged that Dwiggins, his co-inventor, had refused to sign the application but had filed a sole application in his own name. The Commissioner pointed out that an interference would be a use less proceeding, for Crane could not secure a patent without the signature of Dwiggins.

The patent laws are designed to reward the first inventor and it is only in unusual and exceptional cases that the first inventor in fact is not declared the first inventor in law. Certain bars against the first inventor in fact have been interposed in the administration of the patent laws, and are usually based upon the premise that to so regard him would be inequitable. In Consolidated Fruit Jar Co. v. Wright, 94 U. S. 92, the Supreme Court, referring to such a doctrine, characterized it as "A principle akin to the doctrine of equitable estoppel". It was obvious there, as has been true in many instances in cases which have followed, that the doctrine of estoppel has, at times, been applied in instances where all the elements of equitable estoppel were not present. But the doctrine has been applied by the courts only when it would be inequitable for some inventor other than the first to lose his reward to his less deserving adversary.

Now, it is at once apparent that that kind of situation does not prevail here. It would not be inequitable to Evans or Day to give Long something which Evans and Day could not have even if Long had never entered the Patent Office. They, by their conduct, in effect having conceded, as we think they have, that they were not the inventors of the subject matter here involved, should not be concerned with the question as to who is the first inventor of it.

The reason for the rule relied upon by the board that a losing contender in an interference may not have broader claims allowed him than the issue of the interference, is based upon the premise that having lost in the priority contest for the narrow invention without bringing forth the broad invention, he is presumed not to be the inventor of the broad subject matter and, therefore, should not, upon such a showing, be entitled to claims which would dominate the invention won by his adversary, since it is presumed that if either of the parties is entitled to later claim the same in other applications it would be the winning party. It is clear in this case that Evans or Day could not then, or later, successfully claim this disputed subject matter, and instead of the record disclosing

what the Patent Office must necessarily hold the law presumes (that applicant is not the first inventor) this record, while not conclusive, points in the opposite direction. Whether the applicant has satisfactorily shown by the instant record that he, as against others regarded as prior art for Evans and Day, is the first inventor, may be a proper consideration elsewhere but not here.

We are of the opinion that the board's reasons for applying the so-called estoppel in denying applicant's claims, under the circumstances heretofore set out, are not sound. The fact that the record before us, including the record of said interference 58,260, does not conclusively show that one of the prior art patentees may not be the first inventor is not a sufficient justification for the appliIcation of the rule when confronted with a record that disclosed that neither Evans nor Day could be held to be the first inventor. The so-called bar or estoppel applied by the Patent Office, to have any basis in law whatever, must rest upon the fact that to otherwise hold would be visiting an injustice upon someone, and that the injustice arose from the conduct of the appellant. This record does not warrant the conclusion that appellant's conduct was tainted with bad faith or resulted in injury to an interference adversary or to anyone else. Indeed, it is difficult to understand how appellant could have been expected to have done more, or other, than what he did do.

We think the record discloses that all parties to said interference understood that the claims were not patentable to Evans or Day. This, in effect, had already been held and the fact, as pointed out by the board, that "it is not apparent but that other claims might possibly have been drawn to avoid Butler and which would have been broader than the counts of interference No. 58,260 and still readable upon all of the parties", or the further suggested fact that under some assumed, but not expressed, authority Evans might have declared earlier dates, are not matters of such importance, when taken with other circumstances of the case, as to warrant rejection of the claims on the basis of so-called estoppel. Chapman v. Wintroath,

252 U. S. 126.

It is too well settled to require extended citation of authority that estoppels, and bars not created by statute, when interposed against statutory rights, are not favored by the courts. They should never be applied except where the facts upon which such doctrines are based are clear and definite and never on suppositious, conjectural or hypothetical premises. Compare Miller v. Hayman, 18 C. C. P. A. (Patents) 848, 862, 46 F. (2d) 188, and Severson v. Olson, 20 C. C. P. A. (Patents) 946, 952, 64 F. (2d) 694.

Appellant, in arguing that the rule that an applicant who was the losing party in an interference may not have broad claims which

dominate the interference issue, by reason of the effect of the failure to move under rule 109, is not applicable in the instant case, cites a number of authorities as having some bearing on the question. As has been hereinbefore stated, no case cited or found is directly in point on all phases of the instant case.

In Underwood's Interference Practice, 1928, at page 352, under the heading: § 129. Second Interference-In Exceptional Cases Only, we find the following:

* To justify a second interference, there must be some exceptional circumstances, such as were present in Sarfert v. Meyer, (76 MS., Dec. 410), where the decision in the first interference was in favor of Sarfert upon the specific issue; but it appeared from the findings of fact that Meyer was the first inventor of the broad invention common to the two cases.

From In re Klahn, 1917 C. D. 7, 241 O. G. 623, a decision of the Examiners-in-Chief (now the Board of Appeals), we quote the syllabus as follows:

Where after the termination of an interference involving only narrow claims the winning party takes out a patent which does not claim the invention broadly and the losing party establishes by competent evidence that he made another species of the invention patentably different from that involved in the interference prior to the date of invention established by his opponent, Held that he is entitled to a claim broad enough to cover both forms of the invention notwithstanding the adverse decision in the interference.

We quote the following from appellant's brief:

And in the latest case known, In re Thompson (1933) [20 Pat. Quar. 252], it was held:

"Applicant is not estopped to secure a claim broader than and dominating a patented claim he has refused to copy for interference purposes, although he could have made such claim, where a certain prior art patent had been cited in both the patent and the pending application, but applicant in the pending application has sworn back of the same, and where neither commensurate claims nor any indication that the patentee claimed to be the first inventor of the broad subject matter was present in the patent".

This decision by the Board of Appeals does not contain the exact language as above quoted, but the quotation would seem to be an accurate summary of the holding of the board.

It follows from the foregoing that the board erred in affirming the rejection, by the examiner, of the claims at bar on the so-called ground of estoppel, and its decision is reversed, and the cause is remanded for such further proceedings as are in harmony with the views herein expressed and as are warranted in law.

HATFIELD and LENROOT, Judges, dissenting:

The question of the right of the adverse parties in the interference proceeding to make appellant's broad claims here involved should