[U. S. Court of Appeals for the District of Columbia]

IN RE UNITED STATES, EX RELATIONE AMERICAN GAS-ACCUMULATOR COMPANY, A CORPORATION OF NEW JERSEY, v. CONWAY P. COE, COMMISSIONER OF PATENTS.

No. 6,536. Decided May 4, 1936

471 O. G. 479; 84 F. (2d) 398

1. MANDAMUS-INTERFERENCE-DISCRETIONARY POWER OF THE COMMISSIONER. Where an interference involving the application of D. and a patent to B. owned by petitioner was dissolved on the ground that D. was not entitled to the claims in issue, Held that in allowing other claims in the D. application the Commissioner merely exercised the discretion reposed in him by law and if error was committed the remedy is not by mandamus.

2. WRIT OF PROHIBITION-MOOT QUESTION.

Where following the dissolution of an interference between an application of D. and a patent to B. owned by petitioner and the denial of a petition for a writ prohibiting the Commissioner from issuing a patent to D., and patent was issued to him on claims other than the issue of the interference, Held that an appeal from the denial of the writ raises a moot question since all questions involving the validity of the patent to D. have passed beyond the jurisdiction and control of the Patent Office.

3. MANDAMUS-INTERFERENCE-RULES OF PROCEDURE,

Mandamus will not lie to compel the Commissioner to enter a formal judgment in an interference between a patent and an application which was dissolved and a patent thereafter issued to the applicant since no statute or rule of the Patent Office requires the entry of the judgment following a decision on a motion to dissolve and the procedure in interferences is determined by the rules of the Patent Office.

4. SAME SAME DISCRETIONARY POWER OF THE COMMISSIONER.

Mandamus will not lie to compel the Commissioner of Patents to issue a judgment in an interference following the decision of the Examiner of Interferences since the Commissioner is vested with authority to pass upon the proceedings in interferences and in the exercise of this authority he acts in a quasi-judicial capacity.

Mr. C. B. DesJardins and Mr. John H. Bruninga for appellant.

Mr. R. F. Whitehead for appellee.

Before MARTIN, Chief Justice, and ROBB, Van Orsdel, GRONER, and STEPHENS, Associate Justices

VAN ORSDEL, A. J.:

This is an appeal from an order of the Supreme Court of the District of Columbia dismissing a petition for writs of mandamus and prohibition and discharging a rule to show cause issued against the Commissioner of Patents.

It appears that an interference proceeding was had in the Patent Office between a pending application of one Thomas D. Davidson, No. 344241, filed March 5, 1929, and a patent to Boots et al., No. 1751070, owned by the petitioner. This application of Davidson was filed during the pendency of another application of his, No. 421761, which had been filed on November 4, 1920 and in which certain claims had been allowed. The Examiner rejected Davidson's later application, and on appeal his decision was affirmed by the Board of Appeals. The Board, however, later reconsidered and vacated its first decision and allowed the rejected claims, stating that certain patents had been called to its attention, including the patent to Boots et al., and holding that Davidson was entitled to a filing date of November 4, 1920, which antedated Boots' application. The Board of Appeals stated, however, that "it is not thought that he [Davidson] is entitled to a patent without an interference, in view of the claims of these patents". The Board further said:

In view of the claims which have been allowed to Cardwell and Boots et al. and the fact that the ground of rejection is not a clear anticipation but is of an argumentative character we will set aside our decision of December 6, 1932, and reverse the decision of the Examiner as to claims 2, 3, and 4,

Davidson then copied one claim of the Boots patent and an interference was declared. Boots moved to dissolve the interference, attacking the right of Davidson to make the copied claim, and setting forth other grounds for dissolution. The Examiner of Interferences granted the motion to dissolve the interference and denied a motion to amend the issue. An ex parte appeal was taken by Davidson from the decision of the Examiner to the Board of Appeals, but was later withdrawn. Thereafter the claims of the Davidson application, other than the three claims considered by the Board in the former appeal, were canceled and the application was passed to issue.

In the present case a writ of mandamus is sought to compel the Commissioner to enter a formal judgment in the interference between the Boots patent and the Davidson application, holding that Davidson is not entitled to the claims which were allowed by the Board and which led to the interference. The writ of prohibition is sought to prohibit the Commissioner from issuing to Davidson a patent containing these claims.

[1] After the petition was dismissed and the rule discharged in the lower court, and an appeal taken to this court, the Commissioner of Patents proceeded to issue to Davidson a patent containing the contested claims. In allowing these claims the Commissioner merely exercised the discretion reposed in him, and if error was committed the remedy is by appeal, not by mandamus.

115363-37-4

[2] It seems to be conceded here that the matter of prohibition has become a moot question, since a patent has been issued to Davidson and all questions involving the validity of that patent have passed beyond the jurisdiction and control of the Patent Office and are no longer subject to any action by the Commissioner of Patents. McCormick Machine Co. v. Aultman, 169 U. S. 606; 1898 C. D. 398.

[3] Coming now to the question of the right of petitioner to a writ of mandamus compelling the Commissioner to enter judgment in conformity with the holding of the Examiner of Interferences on the motion to dissolve the interference, we think that petitioner is not entitled to this writ. Our attention has not been directed to any statute or rule of the Patent Office which provides for or requires the entry of a judgment by the Examiner of Interferences following a decision on a motion to dissolve. To go back now in this closed interference and enter the order here sought would, we think, amount to a rejection of the claims of the Davidson patent. The right of Davidson to these claims has already been determined by the Commissioner and the patent has been issued to Davidson, thus placing the matter, so far as the patent is concerned, beyond the jurisdiction and control of the Patent Office.

Section 4904 R. S. (35 U. S. C. A. sec. 52) provides for interferences, but nowhere does it specify the procedure to be followed in an interference proceeding. We have held, in a fully considered opinion, that the procedure in interference is determined by the rules of the Patent Office. Allen v. United States ex rel. Lowry, 26 App. D. C. 8; 1905 C. D. 643.

[4] But we are confronted with a more conclusive reason why mandamus will not lie in this case. The Commissioner of Patents, in considering an application for a patent, is vested with authority to determine whether or not an interference shall be instituted, and to pass upon the proceedings in interferences. In the exercise of this authority he acts in a quasi-judicial capacity, and his discretionary action in this respect cannot be controlled by mandamus or injunction.

*

That it was intended that the Commissioner of Patents, in issuing or withholding patents, in reissues, interferences and extensions, should exercise quasijudicial functions, is apparent from the nature of the examinations and decisions he is required to make, and the modes provided by law, according to which, exclusively, they may be reviewed. It is suggested that the writ was erroneously awarded by the court below, on the ground that the decision of the Commissioner of Patents, in favor of issuing the patent to the relators, was erroneous in law upon its face. But that question does not arise upon this record. We have adjudged that it belongs exclusively to the Commissioner to decide the question for himself, whether a patent ought to issue. Butterworth v. Hoe, 112 U. S. 50, 67, 68.

The judgment is affirmed.

CASES ADJUDGED IN

UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS

462 O. G. 673; 23 C. C. P. A. 701; 79 F. (2d) 914

MCKEE v. STEVENS (No. 3526)

1. PATENTS-INTERFERENCE REDUCTION TO PRACTICE.

The nature of the device in issue here, coupled with its use in connection with inflammable and poison gases, plainly indicates that it should have been tested in such a way as to show that it would operate successfully under actual working conditions.

2. PATENTS-INTERFERENCE-DILIGENCE.

Appellant has not established what he must establish to be successful here, namely, diligence during the critical period from immediately prior to the date of appellee's entry into the field to his date of filing. He cannot be awarded priority.

United States Court of Customs and Patent Appeals, November 25,

1935

APPEAL from Patent Office, Interference No. 63556

[Affirmed.]

Fred Gerlach and Norman H. Gerlach for appellant.

Kwis, Hudson, & Kent, and A. J. Hudson for appellee.

[Submitted on brief]

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

GRAHAM, Presiding Judge, delivered the opinion of the court: The present proceeding is an appeal from the decision of the Board of Appeals of the United States Patent Office in an interference proceeding, awarding priority to the appellee, Stevens. The appellant, Garnet W. McKee, filed his application in said office on May 7, 1930, seeking a patent upon an improvement in meter connecting devices. The appellee, Charles W. Stevens, filed an application for a patent for a similar invention in said office on March 19, 1930.

The counts of the interference were five in number. The first count is deemed to be sufficient for purposes of illustration, and is as follows:

1. Means for spacing the two service pipes of a meter comprising a rigid one-piece bar having at one end thereof means for engaging one of the service

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pipes and having at the other end thereof a conical opening forming a seat, a conical sleeve to fit in said seat and rotatably mounted therein, said sleeve having a screw thread in its larger end for connection with the other service pipe and a screw thread for connection with the meter pipe.

The Examiner of Interferences, after the interference had been redeclared, and after the parties had taken testimony, held that the burden of proof was upon McKee, as the junior party. It appearing that the junior party had abandoned counts 2, 4, and 5 of the interference, priority was awarded to Stevens as to said counts. No appeal has been prosecuted to the court as to the same. only issues of the interference relate to counts 1 and 3.

The

The Examiner of Interferences further held that the party Stevens had conceived and reduced the invention defined in said counts to practice "at least by October 1929."

The examiner further held that there was evidence as to the party McKee having conceived and constructed some of the devices the subject of the interference in June, 1928, but that there was no evidence sufficient to show that he reduced the invention to practice at that time; that the evidence introduced by him as to the testing of the device was insufficient to prove reduction to practice; that "at the time" Stevens entered the field, McKee was not shown to have been exercising diligence, and that, therefore, the appellant was not entitled to priority, which was awarded to the party Stevens.

The Board of Appeals followed much the same line of reasoning. It came to the conclusion that it was "satisfactorily established that McKee did conceive a structure within the terms of counts 1 and 3 in June, 1928, and that one or two connector bars corresponding to the same counts were made shortly thereafter." However, the Board was of opinion that this device was not so tested as to constitute reduction to practice, and that, therefore, the invention was not complete. The board was also of the opinion that in view of McKee's delays until 1930, before filing his application, his work in 1928 constituted merely an abandoned experiment, and that if this could not be so considered, then McKee was shown by the record to have shown an intention to suppress this particular construction. Therefore, priority was awarded to the party Stevens.

The issues are simple, and not difficult to determine. Considerable testimony was taken by the parties, as to their activity during the period involved in producing this invention. McKee was connected with the Eclipse Fuel Engineering Company, of Rockford, Illinois, and Lake Geneva, Wisconsin, as the engineer of the company. His company, in June, 1928, was engaged in the sale of connectors for gas meters. During June, 1928, the company was making and selling a type of connector with a cylindrical sleeve union outlet. This was a straight sleeve. At that time, McKee conceived and disclosed the