# Application of Hans Hilmer, Gerhard Korger, Rudi Weyer and Walter Aumuller

> Court of Customs and Patent Appeals · July 28, 1966 · 359 F.2d 859

URL: https://www.frixlaw.com/law-library/cases/9451654

## Case

- **Full name:** Application of Hans HILMER, Gerhard Korger, Rudi Weyer and Walter Aumuller
- **Court:** Court of Customs and Patent Appeals
- **Decided:** July 28, 1966
- **Citations:** 359 F.2d 859; 53 C.C.P.A. 1288
- **Precedential status:** Published
- **Opinion:** Dissent by Worley
- **Judges:** Worley, Rich, Martin, Smith, Almond
- **Cited by:** 31 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/9451654

## How later opinions describe it (automated extraction)

- explaining that the case arose from a "priority dispute” in an interference

## Opinion text

WORLEY, Chief Judge
(dissenting).
It seems to me the majority below has the better of the argument with the majority here. Typical of my misgivings regarding the reasoning and conclusion of the present majority is the effort to fashion In re Walker into a controlling precedent for its position. It would be highly presumptuous of me to assume that merely because of my participation in that decision I became an authority on what the court held. It would be equally presumptuous to assume that I at once became an expert on Congressional intent merely as one of 435 members of the House of Representatives which passed the Boykin Act, or perchance as one of many who suggested or opposed language in that or other measures. The real test of judicial or legislative intent lies in the language employed. What the court held in Walker is found in its decision, and what Congress intended is found in the statute. In Walker this court expressly said:
The rejection by the tribunals of the Patent Office in the case at bar is based not upon the filing date of Whiteley’s foreign application but upon the adverse award of priority of intention against appellant and in favor of Whiteley, the patentee. (Emphasis supplied).
Thus all else is obviously dicta.
There is no real judicial precedent in the cases cited below or here, save the re *885 cent District Court opinion 1 in Eli Lilly v, Brenner where the issue was squarely raised and properly disposed of. 2 In view of the unsettled and conflicting case law when the 1952 Patent Act was passed, it is not possible to ascertain which line of decisions Congress was “legislatively ratifying.” Nor am I convinced that under such circumstances Congress was ratifying the then Patent Office practice. 3
Granted the desirability of following the status quo, this court has never been reluctant to depart, in some instances sua sponte, from that principle. 4 Thus there is no valid reason in law or logic why this court should prevent the Patent Office from correcting, on its own, what it obviously recognizes to be prior misinterpretation of Congressional intent.
While it has been said (see Bate Refrigerating Co. v. Sulzberger, 157 U.S. 1 , 15 S.Ct. 508 , 39 L.Ed. 601 ; Webster v. Luther, 163 U.S. 331 , 16 S.Ct. 963 , 41 L.Ed. 179 ) that the practical construction given to an act of Congress, fairly susceptible of different constructions, by an executive department of the Government is entitled to respect, and in doubtful cases should be followed by the courts especially where interests have grown up under the practice adopted, it seems to me the meaning of the statute is clear and no prior practice inconsistent with that meaning can be given effect. See Andrews v. Hovey, 124 U.S. 694, 716-718 , 8 S.Ct. 676 , 31 L.Ed. 557 . Antecedent administrative interpretation long in force does not render it impossible for the Patent Office to promulgate a new interpretation changing for the future the earlier practice, particularly when the new interpretation appears to comport with the plain meaning of the statute. See American Chicle v. United States, 316 U.S. 450 , 62 S.Ct. 1144 , 86 L.Ed. 1591 . Section 119 states that a United States application based on a foreign application “shall have the same effect as the same application would have if filed in this country on the date on which the application * * * was first filed in such foreign country.” There is no language in Section 119 to restrict that effect in any way, whether for purposes of obtaining a patent or subsequently utilizing that patent as a prior art reference, i. e. evidence of priority as to the disclosed subject matter, to defeat another’s right to a patent. It seems to me the majority here legislates into the *886 statute words of limitation which Congress has not placed there. That it cannot do. Bate Refrigerating Co. v. Sulzberger; Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 14 , 59 S.Ct. 675 , 83 L.Ed. 1071 .
I would affirm.
. The author of that opinion is Judge Joseph R. Jackson who rendered distinguished service on this court for many years. He participated in Walker, and rejected it as precedent on the issue in Lilly.
. The oft-repeated statement that administrative construction of a statutory provision receives legislative approval by reenactment of the provision without material change covers the situation where ambiguities in a statute are resolved by reference to administrative practice pri- or to reenactment. It does not mean that an interpretation of a provision of one act becomes frozen into another act merely by reenactment of that provision, so that administrative interpretation cannot be changed prospectively through exercise of appropriate administrative discretion. See Helvering v. Wilshire Oil Co., 308 U.S. 90 , 60 S.Ct. 18 , 84 L.Ed. 101 . Nor does it mean that prior construction has become so embedded in the law that only Congress can effect a change. Helvering v. Reynolds, 313 U.S. 428 , 61 S.Ct. 971 , 85 L.Ed. 1438 . Moreover, any assumed acquiescence of Congress to the Patent Office interpretation of R.S. 4887 prior to its 1952 enactment of Section 119 would appear of little import, absent evidence that that interpretation was expressly called to the attention of Congress at the time and expressly adopted. See Sutherland Statutory Construction, § 5109 (3 ed. 1943).
. See, e. g., Shoe Corp. of America v. Juvenile Shoe Corp. of America, 266 F.2d 793 , 46 CCPA 868, reversing Patent Office practice and judicial precedent which had stood for over 30 years. See also In re Bremner, 182 F.2d 216 , 37 CCPA 1032; In re Nelson, 280 F.2d 172 , 47 CCPA 1031; In re Wilke, 314 F.2d 558 , 50 CCPA 964; In re Palmquist, 319 F. 2d 547 , 51 CCPA 839; In re Manson, 333 F.2d 234 , 52 CCPA 739, many of which are discussed in Brenner v. Manson, 383 U.S. 519 , 86 S.Ct. 1033 (1966).

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9451654. Public record. Not legal advice.