In re Robertshaw

• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Writing for the Court: GRAHAM, Presiding , and BLAND, HATFIELD, GARRETT, and LENROOT, Associate
• Citation: In re Robertshaw, 75 F.2d 203 (Cust. Ct. 1935)
• Decision Date: 04 February 1935
• Docket Number: Patent Appeals No. 3561.
• Parties: In re ROBERTSHAW.

75 F.2d 203 (1935)

In re ROBERTSHAW.

Patent Appeals No. 3561.

Court of Customs and Patent Appeals.

February 4, 1935.

Byrnes, Stebbins & Blenko, of Pittsburgh, Pa. (William H. Webb and William H. Parmelee, both of Pittsburgh, Pa., of counsel), for appellant.

T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

GARRETT, Associate Judge.

The immediate question here involved grows out of a petition for remand of the above-styled case to the Patent Office, as hereinafter set forth.

An application for patent by appellant, relating to improvement in valves, was finally rejected, for lack of invention over prior art cited, by the Primary Examiner of the United States Patent Office on July 24, 1933. Appeal was duly taken to the Board of Appeals, and on June 21, 1934, the latter tribunal affirmed the action of the Examiner.

Thereafter appeal was taken to this court and a certified transcript of the record was duly filed with the clerk of the court on September 21, 1934. On October 20, 1934, for satisfactory reasons, the court granted a motion of appellant for a sixty-day extension of time for printing the record. Later, the court, of its own motion, entered an order giving an additional extension.

On November 12, 1934, a petition was filed on behalf of appellant, seeking a remand and return of the cause "and the transcript of record filed herein" to the United States Patent Office. At the end of this petition there was a "joinder" on the part of the Commissioner of Patents, the same being signed by the Solicitor for the Patent Office. We here quote the texts of the petition and "joinder":

"Petition to Remand.

"To the Honorable, the Judges of said court:

"Your petitioner, George A. Robertshaw, appellant in the above-entitled case, respectfully represents that:

"1. The application for Letters Patent involved in this appeal was duly filed in the United States Patent Office on September 17, 1926 and was thereafter duly prosecuted before the Primary Examiner in Division 39. After prosecuting this case before the Primary Examiner from September 17, 1926 until July 24, 1933, this application was finally rejected by the Primary Examiner on the latter date. Thereafter on January 20, 1934 an appeal was duly taken to the Board of Appeals of the United States Patent Office which, on June 21, 1934, denied applicant's request for a patent and affirmed the action of the Primary Examiner. Thereafter this appeal to this Honorable Court was duly taken, which appeal is now pending before it and remains unheard by said Court.

"2. On September 25, 1934, United States Letters Patent No. 1,974,975 were issued by the United States Patent Office to Louis Stein and Walter C. Peters on an application therefor filed September 30, 1932. This patent relates to exactly the same subject matter as the application involved in this appeal; both applicants were claiming exactly the same subject matter; and the applications were copending in the Patent Office. An interference should have been but was not declared by the Patent Office between these two applications during their pendency in the Patent Office.

"3. Since the discovery by petitioner of this error on the part of the United States Patent Office, appropriate steps have been taken by the petitioner in order to obtain an adjudication of the question of priority as between petitioner and the patentees of the aforesaid patent. On November 7, 1934, the United States Patent Office in accordance with the statutes and rules in such cases made and provided, declared an interference between petitioner's application Serial No. 136,039, the application involved in this appeal to this court, and said Stein et al. patent No. 1,974,975, said interference being identified as No. 69,678. A correct copy of the declaration of the aforesaid interference is attached hereto and marked `Exhibit A.'

"4. It is essential that this cause and the transcript of record filed herein be remanded and returned to the United States Patent Office to the end that full and appropriate proceedings may be had in the United States Patent Office in accordance with the statutes and rules in such cases made and provided. As appears from paragraphs 2 and 3 of page 2 of `Exhibit A' attached hereto consideration de novo will be given this application including the claims now pending before this Court.

"Wherefor your petitioner prays that this cause and the transcript of record filed herein be remanded and returned to the United States Patent Office for further proceedings in accordance with the statutes and rules in such cases made and provided.

"Joinder.

"The Commissioner of Patents hereby joins in the foregoing petition to remand and return this cause and the transcript of record therein to the United States Patent Office for further proceedings."

Affidavit in support of the petition was made by one of the attorneys for appellant.

It is noted from the transcript of record, filed in the appeal to this court, that appellant gave the notice of appeal to the Commissioner of Patents on August 7, 1934, and, in a brief in support of the petition to remand, the statement is made that the decision of the Board of Appeals sustaining the right of Stein and Peters to patent was rendered on that same day. The patent in fact issued under date of September 25, 1934, according to the petition. The petition does not state the date upon which notice of the patent was first brought to appellant's attention, but it does allege that "this patent relates to exactly the same subject-matter" as appellant's application; that since the application of appellant and that of Stein and Peters were copending, an interference should have been declared; and that, following discovery of this situation, appellant took appropriate steps "to obtain an adjudication of the question of priority" between the parties.

The exact nature of the steps taken is not revealed by the record, but apparently the procedure comprised, at least in part, the copying of two claims from the patent into appellant's application and requesting an interference. These were claims 1 and 2 of the patent and they became claims numbered 38 and 39, respectively, in appellant's application. The interference so sought was declared, apparently, on November 7, 1934.

As Exhibit A to the petition for remand, there was filed what purports to be a copy of the interference so declared. It sets forth two counts numbered 1 and 2, respectively, they being in the identical language of claims 1 and 2 of the patent.

These two counts, however, are not in the specific language of any of the claims involved in the appeal and no one of the appealed claims is embraced in the interference. It should be said that the appeal involves only three claims. These are numbered 33, 34, and 35, respectively. At one period during the prosecution of the case in the Patent Office two other claims numbered 36 and 37, respectively, apparently were presented, but these had been, in some way, eliminated prior to the final decision of the Examiner.

For the purposes of the question now before us, it will be assumed by us that the procedure above related was in conformity with the Patent Office practice, and that, although the appeal to this court as to certain claims had been taken, the application of appellant still remained in the Patent Office in such position as that he was entitled to proceed as he did proceed.

We deem it of importance to note just here that the petition for remand does not set forth the taking of any action by appellant, in the Patent Office itself, looking toward a reconsideration by the tribunals of that office of the claims involved in the appeal. It may be assumed that it was the view of appellant that since the appeal to this court had been perfected, before he had any notice of the patent, nothing further concerning the appealed claims could be done in the Patent Office, unless they were remanded without any decision upon the merits by this court.

However this may be, it is sufficient at this point to say that the only specific action sought of the Patent Office (other than possibly the securing of the joinder by the Commissioner in the petition for remand) was the declaration of the interference which did not relate specifically to the appealed claims, and this action was taken.

In view of the apparent novelty of the question presented by the petition for remand, this court requested counsel for petitioner to furnish brief with any authorities available "in support of the right of the court to remand without a reversal, affirmance, or modification" of the decision of the Board of Appeals.

Counsel has favored us by so doing. The only authority cited which relates specifically to procedure in appeals to the courts from decisions of the tribunals of the Patent Office is the case of Podlesak v. McInnerney, 26 App. D. C. 399, 1906 C. D. 558. The Solicitor for the Patent Office appended a statement to the brief supplied by attorneys for petitioner, in which he stated his agreement therewith, "particularly in view of" the said Podlesak Case, supra.

We note that while in the said case, the Court of Appeals of the District of Columbia, obviously upon its own motion, did remand the cause (an interference proceeding) for certain specific reasons without a formal declaration of reversal, nevertheless it stated in the body of the opinion: "* * * We consider that an error has been committed in this case. * * *"

It is our view that while the Podlesak Case, supra, constitutes a precedent for remanding a case to the Patent Office, under certain circumstances, without any formal reversal, affirmation, or modification of the decision on appeal, the facts of the instant case do not justify the application of the rule there followed.

It may be...