closed by Bennett, but not having the particular form of closure claimed by him. A secondary reference was relied upon by the Patent Office Tribunals showing a closure for cans, the closure of which was so similar to that employed by Bennett that, if such secondary reference could be properly resorted to, the claims of Bennett lacked patentability. We reversed the decision of the Board of Appeals in that case and held that the claims were patentable. In our opinion we stated:

After careful consideration of the matter, we are inclined to the belief that the claims of the appellant should have been allowed. There is great doubt whether the fact that a similar method of closure which might have been applied to tin cans and paint buckets, would suggest to the mind of one skilled in the art of manufacturing steel barrels that the same principle might be applied to the manufacture of such barrels. We are clearly of the opinion that such worker in the art, on an inspection of the Schroeder barrel, would not, because of his observation of the same, be led without experimentation to a conception of the closure disclosed by the appellant in this case.

We think there is a close analogy in the case last cited to the case at bar.

On the other hand, the Solicitor for the Patent Office calls attention to our decision in the case of In re Raleigh, 20 C. C. P. A. (Patents) 751, 62 F. (2d) 200, which case involved a joint in a member which had flexible metal members to move under the influence of pressure. There, as here, there was a basic patent and a secondary reference. The secondary reference had a very broad claim which embraced "The method of seaming sheet metal hollow articles,

*." In our opinion we said:

It is argued first, by appellant, that Sonneborn's patent is not an analogous art. We are not able to agree with this contention. Both the appellant and Sonneborn are engaged in the art of making fluid tight seams in metal of the same general character. As stated in In re Schneider, 18 C. C. P. A. (Patents) 1114, 47 F. (2d) 970, the test is:

* * * Is the patentable conception in Reich in an art so remote and nonanalogous to the concept in applicant's art as to require invention to make the necessary substitution?

It is our opinion that no invention is involved in utilizing Sonneborn's seam and method in constructing appellant's thermostatic cell.

We cannot agree with the Solicitor for the Patent Office that the case last cited is as nearly in point as the case of In re Bennett, supra.

It is our opinion that the Board of Appeals erred in holding that the secondary references were available to supplement the Dillon reference, and for that reason its decision is reversed.

UNITED STATES CIRCUIT COURTS

OF APPEAL

[U. S. Circuit Court of Appeals-Second Circuit]

BAKELITE CORPORATION, WEISS AND DOWNS v. NATIONAL ANILINE & CHEMICAL COMPANY, INC., AND PUNNETT

Decided April 13, 1936

467 O. G. 3; 83 F. (2d) 176

APPEALS-SECTION 4915 REVISED STATUTES-EFFECT OF NOTICE OF APPEAL UNDER SECTION 4912 REVISED STATUTES.

Where, in an interference proceeding, notice of appeal from a decision of the Board of Appeals to the United States Court of Customs and Patent Appeals was given to the Commissioner of Patents as provided in section 4912 Revised Statutes (U. S. C., title 35, sec. 60) and no further action was taken with reference thereto and within six months after the decision of the Board of Appeals a bill in equity purporting to be in conformity with section 4915 Revised Statutes (U. S. C., title 35, sec. 63) was filed, Held the bill was rightly dismissed since, "The statute gives an appellant no right to withdraw his notice of appeal; nor did they purport to. Accordingly the appeal is still pending so far as this record discloses. Hence no suit could be brought under section 63."

APPEAL from the District Court of the United States for the Southern District of New York.

From a final decree dismissing the bill of complaint in a suit brought under Revised Statutes sec. 4915 (35 U. S. C. A. sec. 63), the plaintiffs appeal.

Affirmed.

Watson, Bristol, Johnson & Leavenworth, solicitors for appellants; Jos. N. Nielsen, Charles H. Potter, and Ralph E. Parker, of counsel.

Pennie, Davis, Marvin & Edmonds, solicitors for appellees; W. Brown Morton, Forbes Silsby, and George B. Campbell, of counsel.

Before: L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges

SWAN, Cir. J.:

This is a suit to obtain a patent, and purports to be filed in conformity with Revised Statutes sec. 4915 as amended (35 U. S. C. A. sec. 63). The individual plaintiffs, Weiss and Downs, filed an appli

649

cation for Letters Patent. Bakelite Corporation is their assignee. The individual defendant Punnett also filed a patent application, and the corporate defendant is his assignee. These two applications were involved in an interference proceeding in the Patent Office which resulted in a decision by the Board of Appeals on February 13, 1934, awarding priority of invention to Weiss and Downs as to claims 1, 2, and 3, and to Punnett as to claims 4, 5, and 6. Each party filed with the Commissioner of Patents a notice of appeal and his "reasons of appeal." Thereafter Weiss and Downs filed a notice, as provided in section 59a, electing to have further proceedings conducted as provided in section 63; that is, by bill in equity. In response to their election the Commissioner entered an order dismissing Punnett's notice of appeal. Nothing was said or done with respect to their own notice of appeal. On August 13, 1934, the plaintiffs filed their bill to obtain a patent as to claims 4, 5, and 6. The defendants moved to dismiss on the ground that the district court lacked jurisdiction because Weiss and Downs had taken an appeal from the adverse decision of the Patent Office to the Court of Customs and Patent Appeals, where it was still pending. The motion was granted, and the correctness of that ruling is the sole question presented here.

It cannot be doubted that the statute, as it now reads, means to give alternative remedies to an applicant to whom a patent has been refused. He may appeal.

in which case he waives his right to proceed under section 63 of this title (35 U. S. C. A. sec. 59a); or he may have his remedy by bill in equity, unless appeal has been taken from the decision of the Board of Appeals to the United States Court of Customs and Patent Appeals, and such appeal is pending or has been decided, in which case no action may be brought under this section.

(35 U. S. C. A. sec. 63). Neither section 59a nor section 63 defines how an appeal is taken, but section 60 provides

When an appeal is taken to the United States Court of Customs and Patent Appeals, the appellant shall give notice thereof to the Commissioner, and file in the Patent Office, within such time as the Commissioner shall appoint, his reasons of appeal, specifically set forth in writing.

We entertain no doubt that this is what section 63 means by the phrase "unless appeal has been taken." Section 60 is identical with section 4912 of the Revised Statutes except as to the court to which the appeal may be had; and section 4912 was derived from section 11 of the act of March 3, 1839 (5 Stat. 354), which provided that a party shall have a right to appeal by giving notice thereof to the Commissioner, and filing in the Patent Office, within such time as the Commissioner shall appoint his reasons of appeal, specifically set forth in writing,

This statute was construed in Greenough v. Clark, 10 Fed. Cas. No. 5,784 (C. C. D. C.) where Judge Morsell said:

From a careful examination of the provisions of this statute, I am satisfied that the filing of the reasons of appeal must be considered as essentially the appeal itself;

In the subsequent reenactment of the statute, substantially in the same form, this prior judicial construction, although rendered by an inferior court, is at least persuasive indication of the interpretation adopted by Congress. Becker v. General Chain Co., 273 F. 419, 423 (C. C. A. 1); Central Paper Co. v. Southwick, 56 F. (2d) 593, 596 (C. C. A. 6); The Devonshire, 13 F. 39, 42 (C. C. Oreg.); Trumbull Steel Co. v. Routzahn, 292 F. 1009, 1010 (N. D. Ohio); cf. Rea v. Keller, 112 So. 211, 212 (Ala.); Citizens' Trust & Savings Bank of South Bend v. Fletcher American Co., 192 N. E. 451, 452 (Ind.); Texas Fidelity & Bonding Co. v. City of Austin, 246 S. W. 1026, 1028 (Tex.). Moreover, this construction finds support in the analogy of an appeal from a district court to a circuit court of appeals; such an appeal is "taken" when the notice of appeal with assignment of errors is filed in the court below. See In re Foster Construction Corp., 49 F. (2d) 213, 214 (C. C. A. 2).

The defendants rely upon the Rules of the Court of Customs and Patent Appeals applicable to appeals from the Patent Office. Rule XXV requires a party desiring to appeal to file with the clerk a petition showing compliance with sections 60 and 61 of the statute and praying that his appeal may be heard for the reasons assigned therefor to the Commissioner; he must also file a certified copy of the record; and Rule V requires the payment of a docket fee. In our opinion these rules have to do with perfecting the record on appeal, like our own rules 13 and 14, rather than with what constitutes taking an appeal within the meaning of section 63. None of the cases cited with respect to the rules has held the contrary. Schmidt v. Tait, 42 App. D. C. 227, 204 O. G. 1347; In re Hitchcock, 47 App. D. C. 251, 247 O. G. 965; In re Sherbondy, 35 F. (2d) 71, 387 O. G. 968 (C. C. P. A.); Nelson v. Berry, 59 F. (2d) 351, 424 O. G. 616 (C. C. P. A.). If we were concerned only with the rules of another court, we might be constrained to follow even dicta of that court, but in construing the statute we may exercise our own judgment. For the reasons already given we are convinced that an appeal was "taken".

We are also convinced that such appeal was pending and had not been decided. Section 59a provides that an adverse party to an interference may, within twenty days after the appellant has filed notice of appeal according to section 60, file notice with the Commissioner that he elects to have all further proceedings conducted as provided in section 63; thereupon the appellant must file his bill in

equity within thirty days, and in default thereof the decision appealed from shall govern the further proceedings in the case. The notice of election filed by Weiss and Downs affected only the Punnett notice of appeal. They were not an "adverse party" to their own notice of appeal. The statute gives an appellant no right to withdraw his notice of appeal; nor did they purport to. Accordingly the appeal is still pending so far as this record discloses. Hence no suit could be brought under section 63, and the bill was rightly dismissed.

Decree affirmed.