# Application of David Bandel

> Court of Customs and Patent Appeals · October 12, 1965 · 348 F.2d 563

URL: https://www.frixlaw.com/law-library/cases/9450929

## Case

- **Full name:** Application of David BANDEL
- **Court:** Court of Customs and Patent Appeals
- **Decided:** October 12, 1965
- **Citations:** 348 F.2d 563; 52 C.C.P.A. 1775
- **Precedential status:** Published
- **Opinion:** Dissent by Smith
- **Judges:** Smith, Rich, Martin, Almond
- **Cited by:** 3 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9450929

## Opinion text

SMITH, Judge
(dissenting in part).
The majority holds that estoppel exists against appellant as to claims 24, 25, 30 and 32 through 36. I cannot agree, for a number of reasons.
First, it is not at all clear from the majority opinion precisely what it is that appellant is thought to be estopped from doing with respect to those claims. The majority opinion implies, and the board specifically states, that “appellant is es-topped from now urging allowability to him of claims that are broader than those involved in the above noted interferences.” (Emphasis added.) This, of course, is simply not so. There is nothing in Title 35 of the United States Code which could be interpreted to deny an applicant the right to present and argue for the allowability of any claims he might desire. Thus, the only possible fact which appellant could be estopped from asserting (if an estoppel in fact exists) is that the date on which he made his invention is prior to the effective date of the Samfield references. In other words, he might be estopped to deny that the Samfield patents are prior art as against his claimed invention.
Second, and more importantly, I am unable in this case to find the elements of an estoppel in pais. Ballentine’s Law Dictionary (2d ed. 1948) says this of es-toppel in pais:
A term properly applicable only to a class of legal estoppels which are not strictly estoppels of record or by deed. Such estoppels were rare and enforced some technical rule of law against the truth, and also against the justice and equity of the particular case. The terms estoppel in pais and equitable estoppel are now generally used interchangeably as applicable to all estoppels which are not those by record or by deed. 19 Am.Jur. 633.
The same work defines “equitable estop-pel” as
An estoppel whereby a person is held to a representation made or a position assumed, where otherwise inequitable consequences would result to another who, having the right to do so under all the circumstances of the case, has, in good faith, relied thereon. 19 Am.Jur. 634.
*573 Along the same lines, Black’s Law Dictionary (3d ed. 1933) says:
* * * An “estoppel in pais” arises whenever one, by his conduct, affirmative or negative, intentionally or through culpable negligence induces another to believe and have confidence in certain material facts, and the latter, having the right to do so relies and acts thereon, and is, as a reasonable and inevitable consequence, misled to his injury. * * * The term “estoppel in pais” includes estoppel by conduct, laches, negligence, and all other estoppels not arising from record, deed, or written contract; which forms of estoppel are also generally called “equitable estoppel,” not because they are recognized as peculiar to equitable tribunals, but because arising upon facts rendering their application in the protection of rights equitable and just, which doctrine is recognized in courts of common law as well as in courts of equity. * * *
And, under “equitable estoppel”: '
* * * “Equitable estoppel” is the effect of the voluntary conduct of a party whereby he is absolutely precluded, both at law and in equity, from asserting rights which might perhaps have otherwise existed either of property, of contract, or of remedy, as against another person who has in good faith relied upon such conduct and has been led thereby to change his position for the worse, and who on his part acquires some corresponding right, either of property, contract, or remedy. * *
When viewed dispassionately, in the cold light of established legal doctrine, it is at once apparent that the facts of the instant case do not make out an estoppel in pais. The element most conspicuously absent is detrimental reliance on the part of the party to whom the representation was made or toward whom the conduct was directed. The opposing “party” in this case is, of course, the Patent Office, and it is difficult to see how that agency has been induced by any representations or conduct of appellant to assume a detrimental position in reliance thereon. Indeed, it is doubtful that any of the acts of appellant could be said to have been a “representation,” although it is arguable that his failure to move to have the broader claims made an issue of the interference could be considered as evidence of an intent to abandon his hope of securing patent protection for them. But even this is sheer speculation.
The only party who could possibly be said to have a right to assert an estoppel against appellant is Samfield, as opposing party in the previous interferences. Thus, if the instant case were an inter partes matter, involving a priority contest between appellant and Samfield, perhaps Samfield might have some tenable basis for asserting an estoppel. But this begins to sound like an estoppel in the res judicata sense, wherein the parties are precluded from relitigating matters that were or could have been decided in an earlier contest between them. And indeed, the case from which much of the so-called doctrine of estoppel in pais seems to spring, Blackford v. Wilder, 28 App.D.C. 535 (1907), rests its decision squarely on the basis of res judicata. As the court there stated:
To sum up: The parties are the same. The applications are the same, and disclose the invention of each issue. The constructions relied on, respectively, as evidencing conception and reduction to practice of the invention of both issues are the same. The fundamental facts of both cases are the same. Applying the well-settled principle of estoppel by judgment, before stated, it follows inevitably that the final decision in the first interference is conclusive, unless it can be made to appear that the question upon which the determination of the second case rests is one that neither was nor could have been presented and determined in the first case. [Emphasis added.]
Here, the parties are not the same, and it has not been determined that “the *574 question upon which the determination of” the present case rests could have been presented in the previous interferences between appellant and Samfield.
Unfortunately, the long line of cases in this court which have expounded the doctrine of estoppel in pais have all too frequently placed heavy reliance on Blackford v. Wilder without seeming to recognize the limitations of that decision. Thus, in In re Rhodes, 80 F.2d 525 , 23 CCPA 816, we find the court relying upon Blackford v. Wilder in a situation where, as in the instant case, the parties (appellant and Patent Office) were not the same as those involved in the previous interference proceeding. The decisions of this court seem to have subtly shifted from the true rule of res judicata annun-ciated in Blackford v. Wilder, to a sort of hybrid “estoppel” which meets neither the requisites of res judicata nor estop-pel in pais. In In re Sommer, 56 F.2d 893 , 19 CCPA 1030, one of the first cases to rely upon Blackford v. Wilder, the court indicated approval of the doctrine of res judicata, without mentioning, however, that the elements of res judicata were not fully met due to the fact that the same parties were not involved. However, in an even earlier case, In re Austin, 40 F.2d 756 , 17 CCPA 1202, the court was already talking in terms of “es-toppel” with little regard to whether the elements of an estoppel had actually been made out. Thus:
* * * if a party to an interference fails to comply with the rules of the Patent Office relative to the presentation of * * * claims [counts], it is thereafter estopped from presenting them as a basis for another interference between the same parties. * * *
One could hardly deny that there is a long line of cases which have consistently used the term “estoppel” in connection with an applicant’s right to present, in an ex parte context, claims which were not put in issue in a previous interference between the applicant and another. I have endeavored to show that in such situations there exists no basis for a true estoppel in pais, nor is there ground for application of the doctrine of res judi-cata. What, then, do these cases really hold? As far as I have been able to determine, they annunciate a sound judicial policy: Where claims clearly could have been put in issue in a previously adjudicated interference proceeding, an applicant should not normally be allowed such claims in a subsequent ex parte proceeding. The reported decisions can be rationalized on no other basis. There is no estoppel in pais, no res judicata. There is simply the judicial determination that it is in the best interests of fairness to thq opposing party in the interference, of conservation of judicial and administrative time and energy, and of protection of the public from the obvious evils of interfering patent claims, that the applicant, as to such claims, should not have a second day in court. As Judge Bland said in his concurring opinion in the Rhodes case, supra:
I concur in the decision of the majority on account of the use of the word “clearly” in the phrase “and presumably knew that the involved invention was clearly disclosed therein.”
******
The so-called doctrine of estoppel is a harsh one and not favored by the courts. Nevertheless, the Patent Office and the courts have found it a wholesome one to apply where the party to which the estoppel is applied neglected or refused to contest priority on a part of the inventive subject-matter in his adversary’s application.
******
* * * One should not be held to be in an inequitable position who has failed to present a claim of priority in that which would ordinarily be overlooked by a diligent, capable patent interference litigant.
So the ultimate question in this case, as I see it, is could the issue of priority with respect to appellant’s present claims 24, 25, 30 and 32-36 clearly have been determined in the previous interfer- *575 enees? It is my view that it is not at all clear that such issue could have been decided in the interference proceedings.
The decision of the majority appears to rest on the ground that appealed claims 24, 25, 30 and 32-36 are directed to the same invention as the counts of the Sam-field interferences, the differences being merely of scope. I most emphatically disagree. For one thing, if the claims and the counts are directed to the same invention, then why were not appellant’s proofs regarding compositions which included additional additives accepted as showing reduction to practice of the counts, in the district court in the first interference ? Consider what the district court said in this regard (172 F.Supp. at 19):
* * * if any of the undisclosed additives materially affect the basic and novel characteristics of the MTS made from all runs except the ferro-type, Dr. Bandel’s composition is not within the teaching of the counts, at least as to those runs.
Tests established that glassine increased the tensile strength of the MTS fourfold. Glyoxal increased the water resistancy of the sheet. Cigarette paper fiber which also increased tensile strength was used as an economic filler.
More crucial is Dr. Bandel’s own testimony on cross-examination that glyoxal “cross-links the adhesive chains, the molecules in the adhesive chains,” a process which he analogized to the vulcanization of rubber.
* * *
It is clear from this testimony that the locust bean gum was materially affected by these substances * * #
In view of the foregoing, I have great difficulty in understanding how it can be said that claims 24, 25, 30 and 32-36 are claiming the same invention as the interference counts. Claims cannot be read in a vacuum; and when those claims are read in light of appellant’s specification, it is apparent that the word “comprising” contemplates the addition to the composition of at least two specific components, glyoxal and paper pulp, the very materials which the district court held “materially affected” the resultant composition.
While, in the traditional sense, those claims can properly be said to be “broader” than the interference counts, in a very real sense they are much narrower, for the specification makes it quite clear that the word “comprising” is in the claims for the sole purpose of permitting inclusion of glyoxal and paper pulp. Moreover, I cannot believe that the words “somewhat broader” and “slightly broader,” as used in section 1101.02 B of MPEP, are meant to cover differences of the magnitude that exists between those claims and the interference counts.
In short, I feel that there was very probably a patentable distinction between the interference counts and claims 24, 25, 30 and 32-36. At any rate, it certainly was not clear that there was not such a distinction. I wish to point out that strict application of the so-called doctrine of “estoppel” tends to put a tremendous burden on an applicant who wishes to protect his priority rights to all subject matter to which he is lawfully entitled. First, he must be able to tell, once and for all, precisely what subject matter is adequately supported by the disclosures of both parties to the interference. Second, he must be able to tell whether any of that subject matter is patentably distinct from existing interference counts. And he must be correct, upon pain of losing any rights he might have to subject matter concerning which he is in error. This seems to me a very unrealistic set of requirements to impose upon an applicant who becomes involved in an interference, since the questions of patentable distinction and support are among the most difficult in patent law. I repeat again, it is only where the issue clearly could have been decided in the interference that an applicant should be precluded from having a determination of priority made in a subsequent ex parte case.
*576 In considering the record, I have not found any indication that the board ever seriously considered the question of patentable distinction between claims 24, 25, 30 and 32-36 and the interference counts. The board merely said that since they “differ from each other only in scope, we fail to see wherein the broader claims before us are patentably distinct from the more narrow claims which formed the counts of the interferences.” No reasoning was set forth and no basis given for such a view. Since I am of the opinion that the board must find that the claims and the counts were clearly not patentably distinct, I would remand for a determination of that issue.
I am in full agreement with the majority's handling of the remaining claims and I therefore concur in that portion of the decision.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9450929. Public record. Not legal advice.