Krasnow v. Bender

• Decision Date: 30 September 1948
• Docket Number: Patent Appeal No. 5402.
• Citation: 170 F.2d 560,79 USPQ 78
• Parties: KRASNOW et al. v. BENDER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

79 USPQ 78, 170 F.2d 560 (1948)

KRASNOW et al. v. BENDER.

Patent Appeal No. 5402.

Court of Customs and Patent Appeals.

June 14, 1948.

Rehearing Denied September 30, 1948.

Shelley Krasnow, pro se.

Richard K. Stevens, of Washington, D. C. (Robert F. Davis, of Washington, D. C., of counsel), for appellee.

Before GARRETT, Presiding Judge, and HATFIELD and JACKSON, Associate Judges.

JACKSON, Associate Judge.

This is an appeal in an interference proceeding from the decision of the Board of Interference Examiners of the United States Patent Office awarding to appellee priority of invention of the subject matter embraced in two counts. The counts read as follows:

"1. An apparatus for measuring the associated radio-activity of substances lining a deep narrow borehole comprising an electrical system adapted to give a series of electrical impulses, means to alter the frequency of the impulses in proportion to the intensity of the radioactivity proximate to the said means, a relay member actuated by the said system and the said means jointly, the electrical system, means, and relay member being held by a single relatively short holder so as to minimize leakage and capacity disturbances in the portion of the circuit connecting the said means and the said relay member, the holder further having narrow lateral dimensions so as to permit its insertion in deep narrow boreholes.

"2. An apparatus for measuring radioactivity at inaccessible locations comprising a system employing feeble electric currents, means to alter the frequency of the said feeble currents in proportion to radioactive intensity, a relay means operated by the said feeble currents, a circuit employing relatively intense currents, a conducting member, and indicating means, the feeble currents cooperating with the relay means to cause pulses of relatively intense current, the conducting member serving to convey the pulses of intense current to the indicating means, the conducting member serving further to allow placing the system employing feeble electric currents and the relay means both remote from the indicating means, the relay means and system employing feeble electric currents being placed contiguous to each other so as to minimize disturbing effects."

The interference involves an application of appellants, Serial No. 137,380, filed April 16, 1937, assigned to Geophysical Development Corporation, and an application of appellee, Serial No. 359,816, filed October 4, 1940, for reissue of his patent, No. 2,133,776, dated October 18, 1939, on an application filed February 18, 1936. Wells Lane Company is the assignee of appellees.

On July 13, 1939, an interference, No. 77,260, involving eight counts was declared between an application of Jacob Neufeld, Serial No. 161,350, filed August 27, 1937, and the involved application of appellants. Later that interference was redeclared to include the application of Lynn G. Howell, Serial No. 224,504, filed August 12, 1938. Pursuant to a decision of the Primary Examiner of August 16, 1940, based upon motions to dissolve, the interference was reformed by striking therefrom counts 4 and 5, which are the counts of the present interference, and, in accordance with the provisions of Rule 129, Rules of Practice, 35 U.S.C.A. Appendix, the involved reissue application of appellee was added and the interference again redeclared with the parties in the following order: Howell v. Neufeld v. Krasnow et al. v. Bender. That interference is still in the Patent Office for decision.

The instant interference, No. 78,980, was declared on January 16, 1941. It involved the parties Bender, Neufeld, and appellants in that order. The proceeding was terminated as to the party Neufeld, he having made no showing why judgment on the record should not be entered against him, as appears in a decision of the Board of Interference Examiners dated January 12, 1944.

During the motion period appellants moved to dissolve the interference as to Bender on the ground that his disclosure is inadequate to support the counts and that he does not disclose any method or apparatus which will operate. Appellants also filed a contingent motion to amend the interference by the addition of one proposed count.

The Primary Examiner denied both motions and stated that there was "No interlocutory appeal." With respect to the latter motion, he held the proposed count to be unpatentable over prior art which had been cited in the ex parte prosecution of appellants' application. Thereupon appellants appealed to the Board of Appeals stating that "The Examiner erred in denying the Krasnow et al. contingent motion to amend for a two party interference with Bender on proposed count K3." Appellants contended that they were entitled to appeal because the present interference was split off from interference No. 77,260 and that that interference had been declared under the old practice in which an appeal was permitted from the denial of a motion to amend and because they were parties to that interference they had the right of appeal in the present interference.

Appellants also filed in each of the beforementioned interferences a motion to take testimony and to suspend the proceeding. They further moved in each of the interferences to file interrogatories to be answered by an officer of appellee's assignee and by an officer of Wells Survey, Inc. The motions were denied. Appellants and their assignee thereupon brought a civil action, No. 12,170, in the District Court of the United States for the District of Columbia praying that the commissioner be ordered to amend his decision denying plaintiff's motion to dissolve the interference between the applications which are here involved. The ground for plaintiff's contention in that action was that there had been no inadvertence, mistake, or excuse for delay in filing the reissue application. The District Court granted defendants' motion to dismiss. Geophysical Development Corporation et al. v. Coe, Com'r, Pats., D.C. 80 F.Supp. 760.

The opinion of Mr. Justice Bailey in that case is short and pertinent here, as it answers many of the allegations vigorously urged by appellants with respect to lack of good faith on the part of appellee. We are in complete accord with Justice Bailey's reasoning and quote the opinion as follows:

"Interferences are declared solely for the purpose of determining priority of invention. If the plaintiff can show priority of invention he will be entitled to a patent: if he be the first inventor and otherwise complies with the law.

"This right will not be defeated by any action of the Patent Office in allowing a reissue of the opponent's patent.

"The procedure in the Patent Office in passing upon the question of reissue is one within the discretion of the Commissioner, and it does not appear that the practice adopted in this interference of not permitting proof to be taken on the question of good faith of the applicant for reissue other than his affidavit is contrary to the usual practice.

"Even if the Court had power to interfere in the action of the Commissioner in this case (which is only an intermediate step in the proceedings) I cannot see that the plaintiff can be irreparably injured. As said before, if the plaintiff can show priority of invention he will be entitled to a patent."

Upon appeal, the judgment of the District Court was affirmed by the United States Court of Appeals for the District of Columbia, 78 U.S.App.D.C. 39, 136 F.2d 275, certiorari was denied by the Supreme Court, 320 U.S. 760, 64 S.Ct. 68, 88 L.Ed. 453.

It appears that in the brief filed on behalf of the Commissioner of Patents in the Supreme Court in the certiorari proceeding, there was a statement in a footnote that interferences 77,260 and 78,980 are governed by the statute as it appeared prior to the amendment of August 5, 1939. Because of that footnote, appellants contend here that the Patent Office is bound thereby, and it was cited here in support of appellants' contention that they have a right to appeal from the decision of the examiner denying their motion to amend as aforesaid.

The Board of Appeals held that it had no jurisdiction to entertain the appeal and stated as follows:

"The instant interference, No. 78,980, was declared on January 16, 1941. In Order No. 3487, 507 O.G. 513-514, Rule 124 was changed to deny the right of appeal from all decisions rendered on motions brought under provisions of Rules 109 and 122, in all interferences declared on or after October 5, 1939."

Upon a request for reconsideration of its decision the Board of Appeals stated as follows:

"On reconsideration no reason is found for changing the conclusions stated. Under the provision of Rule 124 this interference is regarded as standing on its own merits and as having been declared January 16, 1941, per stamp of Examiner of Interferences found on the declaration sheet.

"Whatever may be considered to be the meaning of the statement made in the footnote to page 5 of the Brief for Respondent in the Certiorari case, referred to by counsel for Krasnow et al, it does not appear that the statement was particularly relevant to the question before the Supreme Court, or at all relevent to the interpretation to be given Rule 124, since the statement referred only to the statute. The statute there in question is not concerned with interlocutory appeals."

Appellants then petitioned the commissioner, in his supervisory capacity, to rule that the Board of Appeals had jurisdiction to entertain the appeal. The petition was denied. The Assistant Commissioner pointed out that new Rule 124 was in operation prior to the declaration of the involved interference and since the date when that rule became effective the Board of Appeals had consistently held it to be applicable to interferences according to the date and number thereof regardless of the past history of the counts. In that connection, the Assistant Commissioner stated:

"New Rule 124...