Geophysical Development Corporation v. Coe, 8209.

• Citation: 136 F.2d 275
• Decision Date: 07 June 1943
• Docket Number: No. 8209.,8209.
• Parties: GEOPHYSICAL DEVELOPMENT CORPORATION et al. v. COE, Commissioner of Patents.
• Court: United States Courts of Appeals. United States Court of Appeals (District of Columbia)

136 F.2d 275 (1943)

GEOPHYSICAL DEVELOPMENT CORPORATION et al. v. COE, Commissioner of Patents.

No. 8209.

United States Court of Appeals for the District of Columbia.

Argued May 5, 1943.

Decided June 7, 1943.

Mr. Lawrence Koenigsberger, of Washington, D. C., with whom Mr. Sol. Shappirio, of Washington, D. C., was on the brief, for appellants.

Mr. E. L. Reynolds, U. S. Patent Office, of Washington, D. C., with whom Mr. W. W. Cochran, Solicitor, U. S. Patent Office, of Washington, D. C., was on the brief, for appellee.

Before GRONER, Chief Justice, and EDGERTON and ARNOLD, Associate Justices.

PER CURIAM.

The controversy here arises out of an interference proceeding in the Patent Office, instituted under the provisions of R.S. § 4904,¹ to determine priority of invention between parties claiming substantially the same invention. Appellants applied for a patent on a device for measuring radio activity. An interference was declared with the then pending application of one Neufeld, to which was subsequently added the later application of one Howell. The Office sustained in part a motion to dissolve as to Howell. Before any further steps were taken one Bender filed an application for a reissue of a previous patent to include the same claims. The Office then included Bender in the interference. Thereupon appellants moved to dissolve as to Bender on the ground that his original failure to obtain claims corresponding with the interference counts was not the result of his inadvertence, accident, or mistake, but of his deliberate cancellation of all claims except those then patented to him. This, appellants say, barred Bender's right to renew the claims in a subsequent application. The Commissioner ordered that the motion be considered on the record in the Patent Office, but denied appellants' request to file interrogatories and take evidence in support of their contentions. To test this ruling appellants brought this suit in the District Court for an injunction to require the Commissioner to amend his decision so as to permit the filing of interrogatories and the taking of testimony. The Commissioner successfully moved to dismiss and this appeal followed.

The Commissioner insists, in support of his ruling, that the question of Bender's good faith is secondary to the determination of priority of invention, that proof of priority is essential to the granting of a patent, and that appellants were placed in interference for this sole purpose. Consequently, the Commissioner says, it is of no concern to appellants whether Bender in his original application deliberately cancelled his claims and thereby forfeited his rights, for that is a question the Office will deal with in its own good time, and the decision of which will neither help nor hurt appellants. For even if Bender is not entitled to make the claims, appellants are not entitled to a patent unless they establish priority.

Precisely this was decided by the Court of Customs and Patent Appeals in Ellis v. Maddox, 96 F.2d 308, 25 C.C.P.A., Patents, 1045. There it was held that the Examiner properly refused to consider, on the motion of the junior party to an interference, whether the senior party, an applicant for a reissue patent, was estopped by his conceded abandonment of claims in his prior application. The ground of the decision was that the question was not one of priority, or one ancillary thereto, and hence not determinative of the rights of the junior party to the proceeding. Such questions, it is frequently said, are the concern alone of the public, to be considered ex parte by the Patent Office. Te Pas v. Geldhof, 112 F.2d 800, 27 C.C.P.A., Patents, 1265. We have similarly ruled in analogous cases. Earles v. Gomber, 50 App.D.C. 389, 273 F. 353; Frost v. Chase, 37...