In re Roberts

• Decision Date: 01 March 1920
• Docket Number: 1288.
• Citation: 263 F. 646
• Parties: In re ROBERTS.
• Court: U.S. Court of Appeals — District of Columbia Circuit

263 F. 646

In re ROBERTS.

No. 1288.

United States Court of Appeals, District of Columbia.

March 1, 1920

Submitted January 19, 1920.

H. A Toulmin, of Dayton, Ohio (H. A. Toulmin, Jr., of Dayton Ohio, on the brief), for appellant.

T. A Hostetler, of Washington, D.C., for Commissioner of Patents.

ROBB Associate Justice.

Appeal from a decision of the Patent Office refusing to treat the application herein as a continuation of a joint application embracing the same subject-matter, theretofore filed by appellant and another under a mistake of fact.

On June 24, 1912, the present applicant and Park D. Roberts, his son filed an application embracing, not only subject-matter to which they jointly contributed, but, as well, the subject-matter involved in the present application. An interference was declared between this joint application and a reissue application of Mr. F. A. Bruckman, and during the taking of testimony it developed that the son had nothing to do with the particular subject-matter of the present application. Thereupon priority as to this subject-matter was awarded Bruckman by the Patent Office on the ground that the Roberts were not joint inventors. Just when the final decision was made does not appear, but it does appear that the present application was filed in October of 1917, as a continuation of the former joint application. The drawings, specification, and claims of the present application were copied from the former. In other words, as to the subject-matter involved the present application is in substance the former application; but the Patent Office declined to consider the present application as a continuation of the former joint application, the result being that the Bruckman patent, having issued more than two years prior to the filing of the present application, became a statutory bar to its allowance. The question for our consideration, therefore, is whether, in a case like the present, where it appears that a joint application has been filed through mistake or inadvertence and without fraudulent intent, the sole inventor, one of the joint applicants, is estopped from taking any advantage of that application.

The Examiners in Chief conceded that the result of the Patent Office ruling might be to deprive the applicant of an opportunity to contest the issue of priority, to procure a patent or assert his right thereto, and to permit his adversary 'to go hence with a patent the right to which, and the validity of which, the Patent Office will have failed to determine beforehand. ' The Board, however, felt constrained to follow what it conceived to be a line of decision in the Patent Office to the effect that a sole applicant is a different entity from joint applicants, and hence that a sole application may not be considered in any circumstances as a continuation of the old. The Assistant Commissioner relied upon the prior decisions of the Office, and upon certain decisions of this and other federal courts, to which we will refer later.

In Godfrey v. Eames, 1 Wall. 317, 17 L.Ed. 684, it was ruled that, where an applicant for a patent elects to withdraw his application for the purpose of filing a new application, the two applications are to be considered as parts of the same transaction, constituting one continuous application. The court was influenced by the fact that the two applications covered the same subject-matter, or that there was identity of subject-matter. In Smith v. Goodyear Dental Vulcanite Co., 93 U.S. 486, 32 L.Ed. 952, where an application had been rejected three times, and a new application was not filed until several years thereafter, it was held that the new application, being for the same invention, was a mere continuation of the original application, and not a new and independent one.

While these decisions involve a somewhat different question than...