66

provided he resumes or recalls it before another makes the invention. But his rights do not, in either case, relate back through the intermediate vacuum to the original invention, so as to give him the benefit of its date as against a rival inventor,

and by the language used by the court in the case of Cain v. Park, (C. D., 1899, 278; 86 O. G., 797; 14 App. D. C., 42,) wherein the court says:

From what has been heretofore said we are not to be understood as holding that a renewal application filed within the two years given therefor will under all circumstances relate back to the original and cut off all intermediate applicants and patentees. The statute contemplates the possible existence of facts and circumstances attending the action of the original applicant that might show an abandonment of the invention itself, notwithstanding there may have been no formal abandonment or withdrawal of his application. In such a case it would be wrong to allow him to come into the Office, instigated by the entry of a new and independent inventor into the field, and revive his original invention for the purpose of defeating his rival for reasons similar in their nature to those which controlled the decision of the following cases: Mason v. Hepburn (C. D., 1898, 510; 84 O. G., 147; 13 App. D. C., 86) and Warner v. Smith (C. D., 1898, 517; 84 O. G., 311; 13 App. D. C., 111.)

But objection might be made to the conclusion previously stated, to the effect that the decision of the court in the case of The United States Rifle and Cartridge Company and E. Remington & Sons v. The Whitney Arms Company et al. appears to have virtually set aside the rulings of the Supreme Court of the District of Columbia in the Cochran case and the case of Gray v. Hale et al., on the ground that the court rendering the decision in the first-mentioned casenamely, a circuit court of the United States-had such jurisdiction that its decision should be given the effect of a reversal of the Supreme Court of the District of Columbia at that time, or the theory of such an objection might be stated to be that the circuit court in question and the Supreme Court of the District of Columbia were coördinate tribunals. Granting that if such an objection were made it would be well taken, we are none the less certain that the rulings of the Supreme Court of the District of Columbia on the points of law involved in the Cochran case and the case of Gray v. Hale et al. are no longer followed and are not regarded as correct expressions of the law by the present Court of Appeals of the District of Columbia, which has succeeded to the jurisdiction, formerly exercised by the Supreme Court of the District of Columbia, to entertain appeals from this Office in patent cases. To substantiate this position, we have but to point to the decision of the Court of Appeals of the District of Columbia in the case of Mason v. Hepburn (C. D., 1898, 510; 84 O. G., 147; 13 App. D. C., 86) and the well-known line of subsequent cases following the doctrine therein laid down. In other words, we regard the decision of the present

Court of Appeals of the District of Columbia in the case of Mason v. Hepburn as being a virtual confirmance of the application of the doctrine of equitable estoppel to patent cases, as set out in the heretofore-mentioned decisions of the Commissioner and Acting Commissioner of Patents in the Cochran case and the case of Gray v. Hale et al., respectively.

Nor can the force which we have thus attributed to the decision in the case of Mason v. Hepburn be avoided by pointing out that the inventor against whom the doctrine of equitable estoppel was applied in that case was seeking his patent under a different section of the statute than is the party Wood in this case. It is true that in that case Mason was seeking his patent under section 4886, Revised Statutes, while Wood in this case is seeking his patent at the present time under section 4897, Revised Statutes; but section 4886, Revised Statutes, provides for the issuance of a patent to a first inventor (if he be not subjected to certain enumerated bars, which are of no importance to the present discussion) unless his invention or discovery "is proved to have been abandoned." Section 4897, Revised Statutes, provides that an inventor who has forfeited an allowed application may renew the same, provided his second application be made within two years after the allowance of the original application, and this section directs that upon the hearing of renewed applications "abandonment shall be considered as a question of fact." It is believed to be certain that any state of facts which would constitute an "abandonment" such as would bar an inventor seeking a patent under section 4886 would also constitute such an abandonment as would bar an inventor seeking a patent under section 4897. In other words, there is no reason for holding that the "abandonment" contemplated by one section of the statute is not cocxtensive in scope or meaning with the "abandonment" contemplated by the other section. There is just as much reason and statutory authority for an application of the doctrine of equitable estoppel in a case arising under section 4897, Revised Statutes, as there was for the application of that doctrine in the decision of Mason v. Hepburn, arising under section 4886, Revised Statutes. If the bar of abandonment provided for in section 4886, Revised Statutes, is a suflicient statutory warrant for the application of the doctrine of equitable estoppel, then the bar of abandonment provided for by section 4897, Revised Statutes, is equally and for the same reasons a sufficient warrant for such an application of that doctrine, and from this conclusion it follows that an application of that doctrine in the case at hand cannot amount to an extension thereof, such as, in the cases cited by the Examiner of Interferences, the court has stated it is unwilling to make.

If the bars of abandonment set up in sections 4886 and 4897, Revised Statutes, are, as we believe, one and the same thing and the doctrine of equitable estoppel is not to be applied to a case arising under section 4897, as it has been applied in the Mason v. Hepburn decision to a case arising under section 4886, the result must be due to one of two causes either that doctrine has been applied to cases arising under section 4886 under some clause of that section other than the clause relating to abandonment of invention or that doctrine has been so applied without any statutory authority whatsoever within our knowledge. As we find no clause of section 4886 other than that relating to abandonment which seems to call for or warrant an application of the doctrine, we are forced to the conclusion that it must be the abandonment clause, if any, which gives it statutory authorization. Now, whether this be the fact or whether the application of that doctrine calls not for and needs no statutory authorization, it is equally certain that it may be applied to a proper case arising under section 4897.

We are satisfied that the testimony in this case shows that Wood, with knowledge that Barber was in the field, deliberately withheld his invention from the market and neglected to renew his forfeited. application or to reassert his claims for a patent until practically the end of the period allowed by the statute, and that such conduct on the part of Wood amounts to an abandonment of the invention within the meaning of that term as used in section 4897. Nor is a motive for Wood's conduct wanting. As early as 1898 Wood's original application had been involved in an interference with one Miehle, and Wood had lost the issue of that interference. The issue thus lost was a claim which dominates the subject-matter of this controversy, and such claim appeared in the patent duly granted to Miehle. Wood testifies to the repeated efforts made by himself and his attorney to find an anticipation for this claim of the Miehle patent (Q. 6, p. 53, Wood's record) and frankly states that it was his intention, if a satisfactory anticipation could not be found, to withhold the invention disclosed in his application until the Miehle patent should expire and then put it into machines, (Q. 8, p. 54, Wood's record.) He explains this testimony in X-Q. 26 by saying:

It was my intention to withhold the device from the market, and meanwhile to retain possession of the invention, either through application or patent, until the time stated.

He then proceeds to state that he gave his application no further thought; that the prosecution of that application in the Patent Office was in the hands of his attorney, who knew that the use of the device was debarred, and the witness says:

I presume because of this he let the matter drag; as the device could not be used, nothing was to be gained by hurrying it through the Office. (X-Q. 28.)

Thus Wood states the underlying facts and himself draws the presumption flowing therefrom, which presumption explains the forfeiture of the original application and the protracted delay in renewing the same. Here, too, is the reason for his apparent indifference as to what a rival inventor was doing. Although a prompt reassertion of Wood's claims to a patent might have saved Barber expense, would not such action have hastened the day when the running of the prospective Wood patent should begin, and hence have virtually shortened the term of the monopoly it conveyed by subjecting it sooner and hence longer to the Miehle patent? Can it be doubted that the reason which caused Wood's attorney to "let the matter" of the prosecution of his application "drag" was other or different than that which Wood himself tells us impelled him to withhold the invention from the market?

What consideration has Wood given the public in return for the monopoly he seeks of it? Not the invention in contest surely, for although by his original application he first apparently tendered it, after it had been accepted on his own terms, by his forfeiture, he withdrew it again, that he might later exact a larger tribute. Unmindful of the public demand for the immediate enjoyment of his invention he waited to suit his own ends, and now, forgetful of the rights of a later and more diligent inventor, he seeks the whole reward. We think that he should not find it; that under the circumstances Barber, who alone has actually given the public consideration for the patent sought, is entitled to the patent he has obtained and to a decision in his favor as the one who is of right the first inventor within the true meaning and policy of the patent laws.

The decision of the Examiner of Interference awarding priority of invention to Henry A. Wise Wood, the senior party, is reversed.

DECISIONS

OF THE

COMMISSIONER OF PATENTS

FOR

THE YEAR 1914.

EX PARTE CHAPMAN.

Decided March 29, 1913.

198 O. G., 237.

PATENTABILITY-PROCESS OF PRODUCING GAS.

Claims for a process of producing gas, the essence of which consists in causing relative movement of parts of the incandescent mass, Held antici pated by the patent to Lackner, since the process claimed is performed by the apparatus of the patent.

APPEAL from Examiners-in-Chief.

ART OF GENERATING GAS.

Mr. Isaac B. Owens for the applicant.

TENNANT, Assistant Commissioner:

This is an appeal from the decision of the Examiners-in-Chief affirming the action of the Primary Examiner rejecting claims 1, 2, 3, 4, 18, and 19 of this application. The following claims serve to illustrate the nature of the appealed claims:

1. The improvement in the art of generating gas which consists in maintaining a mass of incandescent or glowing fuel and in causing motion of one portion of said incandescent mass bodily with respect to another portion of said incandescent mass and independent of any relative movement of said incandescent mass and independent of any relative movement of said incandescent fuel in respect to the ash.

19. The improvement in the art of generating gas which consists in maintaining a mass of incandescent fuel, forcing air through said mass to maintain the fuel in incandescent condition and rotating one portion or layer of said mass in respect to another portion of said incandescent mass to prevent the formation of blow holes through said incandescent mass.

The reference relied upon by the Examiners-in-Chief is the patent to Lackner, No. 849,247, April 2, 1997.