DECISIONS

OF THE

EXAMINERS-IN-CHIEF

FOR

THE YEAR 1917.

IN RE KLAHN.

Decided July 25, 1905.

241 O. G., 623.

INTERFERENCE RES ADJUDICATA-BROADER CLAIMS.

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 nothwithstanding the adverse decision in the interference.

[NOTE. This application has eventuated in Patent No. 799,008.] ON APPEAL.

Application of Emil Klahn for a patent for an improvement in ball-bearings filed May 17, 1898, Serial No. 681,532.

Before STOCKING, STEWARD, and BRICKENSTEIN, Examiners-in-Chief. Mr. W. B. Corwin and Mr. Baxter Morton for the appellant. STEWARD, Examiner-in-Chief.

The claim appealed is:

1. A ball retaining device for ball bearings, consisting of a ring shaped portion or base having a series of spaced standards rising at one margin only of the base and having their free ends extended to overhang the base, said free ends being so formed that suitable spaces are presented for receiving and confining balls without preventing free rotation of the balls.

The above claim has been rejected by the Examiner as devoid of patentability over the record in interference No. 19,566 between the present application and the application of one Keiper, which is now

Patent No. 686,617, of November 12, 1901. The claim has also been rejected on this patent to Keiper.

The issue in the interference, which was decided in favor of Keiper, reads as follows:

1. A ball-retaining device for ball-bearings, consisting of a ring-shaped portion or base having a series of standards springing axially from one edge thereof only and terminating in sector-shaped or flaring angularly arranged flanges or extensions, whereby suitable spaces are formed for receiving and confining the balls between adjacent standards.

2. A ball-retaining device for ball-bearings, consisting of a ring-shaped portion or base having a series of standards springing from its inner edge only and terminating in outwardly turned sector-shaped or flaring extensions or flanges, whereby suitable spaces are formed for receiving and confining the balls between adjacent standards.

3. A ball-retaining device for ball-bearings, consisting of a concave ringshaped portion or base having a series of standards springing from its inner edge only and terminating in outwardly turned sector-shaped or flaring extensions or flanges, whereby suitable spaces are formed for receiving and confining the balls between adjacent standards.

It appears that affidavits have been filed under Rule 75 for the purpose of showing a completion of the invention by Klahn prior to the date on which Keiper invented the subject-matter of the interference.

The Examiner states that these affidavits cannot be accepted as having any bearing on this case under Rule 75, since this rule permits affidavits only where the patent cited as a reference does not claim the rejected invention and Keiper does claim the invention of the pending claim, although not in the identical language adopted by applicant.

The pending claim is broader than the issue or any of the claims in the Keiper patent and is also patentably different, since it includes a retaining device for ball-bearings consisting of a ring-shaped portion or base having a series of spaced standards rising at one margin only of the base and having their free ends extended to overhang the base, said free ends being so formed that suitable spaces are presented for receiving and confining balls without preventing free rotation of the balls, whereas the seven claims of the patent are limited to a series of such standards, which either spring from the inner edge of the ring-shaped base or are provided with sector-shaped or flaring extensions, portions, or enlargements.

The Examiner is clearly in error as to the grounds of his decision, since any applicant has the right to base his right to a broad claim upon a specific form of a generic invention of which he is the first and original inventor, even though he has been defeated on the question of priority in an interference involving another specific form of the same invention. (See Reed v. Landman, C. D., 1891, 73; 55 O. G., 1275; Hammond v. Hart, C. D., 1898, 52; 83 O. G., 743; ex parte Whitney, C. D., 1898, 82; 83 O. G., 1659.)

In the case of Hammond v. Hart the Commissioner said:

The third reason adduced in support of the conclusion is that the action "improperly extends the monopoly." I do not think this reason is well founded. It cannot be presumed that a patentee who has gone out with a narrow claim made the broad invention. The presumption is that he claimed all that he invented. Another applicant, having made a broad claim, is entitled to his patent. If a patent with a narrow claim has meanwhile issued, the applicant with the broad claim, having given sufficient proof that he made the broad invention before the application for the patent for the narrow invention was filed, is entitled to his patent. The two patents being issued the long line of reported cases proves conclusively that the courts would undoubtedly hold that the two patents were not interfering patents. If the patentee holding the first patent containing the narrow claim provided that he was the first inventor of the subject-matter of the broad claim contained in the second patent, such claim of the second patent would, in proper proceedings in the courts, be held to be void and invalid.

The patent to Keiper, as already indicated, contains no claim that is not limited to his specific device-that is to say, to a ball-retainer in which the standards rise from the inner side of the ring or base or has free ends of a particular form. All of the claims do not explicitly state that the standards originate at the inner margin; but in each of the claims from which this limitation is omitted there is a statement concerning the flaring shape of the ball-retaining portions which indicates that they spring from said inner edge, the flaring feature being a peculiarity of such standards.

An examination of the aforesaid affidavits shows that they are deficient because they fail to indicate the nature of the device which appellant states he made in the fall of 1896. The statement in that one which is sworn to by appellant is that each of the ball-retainers then manufactured by him consists of

a ring-shaped portion or base having a series of spaced standards arising at one margin only of the base and having their free ends extended to overhang the base, said free ends being so formed as to present suitable spaces for receiving and confining balls without preventing free rotation of the balls.

It will be observed that this language fails to show that Klahn manufactured ball-retainers in which the standards originate at the outer margin of the ring or base, and it follows that the ball-retainers thus made by Klahn may have been identical with the retainers of the Keiper patent and that until appellant has shown a different state of facts the claim here on appeal ought not to be allowed.

An applicant who has been defeated in an interference cannot obtain a patent with a broad claim for an invention if the only species invented by him is the same species as that of the patent granted to his opponent as the result of the interference, even though the claims of that existing patent be limited in their scope, for in such case the applicant is not the prior inventor of any species.

The record in the interference shows that Keiper was the first and original inventor of the species shown in his patent, and Klahn will be entitled to broad and dominating claims in the present application only when he shall have antedated Keiper's date of invention by showing an earlier completion of a different species of the ballretainer. This showing may be made either by means of an affidavit under Rule 75, containing a statement describing the structure of the antedating species, or by a citation of such portions of the testimony taken in the interference (if any there be) as establish the fact that Klahn reduced said species to practice prior to the date of Keiper's conception of his patented invention. As the record for Klahn embraces nearly a thousand pages, we do not consider it our duty to read it for this purpose.

Klahn filed an original application on May 3, 1898, (No. 679,721,) revealing and claiming the invention of the interference issue and also another species in which the ball-retaining standards rise from the outer margin of the ring or base. The application contained no generic claim for the two species. The Examiner on May 9, 1898, required a division as between the claims for the two species, whereupon Klahn restricted his application to the above-mentioned species, and on May 17 filed his present application, which contained only claims for its species. No claim of sufficient scope to cover both forms of the device was presented until after the interference was finally determined. The original application was allowed on June 1, 1898, and on October 4, 1898, Patent No. 611,689, based thereon, was issued to Klahn. Now it appears that the generic invention of the original application can only be made in two forms. The standards must rise from the outer margin of the base or they must rise from the inner margin of said base. Klahn therefore, when he originally claimed his two species, was endeavoring to claim his generic invention, and when he divided his application in compliance with the requirement of the Office was, so far as he knew, still standing before the Office as an applicant for his entire invention. The patented device, as shown by Klahn's testimony, is the preferable form of the invention, for it admits of the making of the standards of any desired length, whereas in the form wherein the standards are cut from the inside of the sheet of metal constituting the base the standards are necessarily restricted in length and cannot be made to retain large balls.

Klahn was defeated in the interference because he failed to reduce the species of his application to practice with reasonable diligence; but it is plain that the adverse decision did not operate to establish Keiper as the prior inventor of the species of Klahn's patent, for as to that species Klahn may have been diligent in reducing to practice. By the interference proceeding only the question therein raised was determined, and that proceeding cannot be regarded as conclusively

establishing in Keiper any right to that form of the ball-retainer which it did not involve or to any broad claim therefor. Keiper does not broadly claim the invention, and Klahn may do so when he shall have properly overcome the prima facie case established by the issuance of the Keiper patent. It is immaterial that the species of the Keiper patent is the same as that of the present application, for this application relates back to the original application, (No. 679,721,) in which both species were originally disclosed. The present application might have included a disclosure of both species for the purpose of illustrating the generic invention of the appealed claim, and, as would appear from what is said in the decision in Phelps v. Hardy et al., (C. D., 1896, 70; 77 O. G., 631,) the patented species may now be introduced in the application drawing. Were this done the applicant would not appear to be basing his broad claim solely on the species of an existing patent granted to a successful interferant.

There is no statutory ground upon which Klahn can be rejected, provided he properly overcomes the effective date of Keiper's patented species. Defeated as a claimant for that species, he may still remain the inventor of the broad invention.

A distinction should be made between the invention disclosed and a specific illustration of that invention. (Ex parte Metzger, C. D., 1902, 407; 101 O. G., 1612.)

We recommend that the appealed claim be rejected upon the ground that the affidavits now in the case are insufficient to overcome the Keiper patent, as well as the date of completion of Keiper's invention, as shown by the interference record.

In view of the above considerations the decision of the Examiner is reversed as to the first point of his decision and affirmed as to the second point thereof.