# Lavin v. Pierotti

> Court of Customs and Patent Appeals · July 6, 1942 · 129 F.2d 883

URL: https://www.frixlaw.com/law-library/cases/9638135

## Case

- **Full name:** Lavin v. Pierotti
- **Court:** Court of Customs and Patent Appeals
- **Decided:** July 6, 1942
- **Citations:** 129 F.2d 883; 29 C.C.P.A. 1235; 54 U.S.P.Q. (BNA) 400; 1942 CCPA LEXIS 98
- **Precedential status:** Published
- **Opinion:** Dissent by Bland
- **Judges:** Garrett, Bland, Hatfield, Lenroot, Jackson
- **Cited by:** 18 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/9638135

## Opinion text

BLAND, Associate Judge
(dissenting).
This case presents a very close question for decision, but I have sufficient doubt about the correctness of the conclusion of the majority in reversing the decision of the board that I am compelled to dissent.
In addition to that portion of the board’s decision which the majority quoted, I quote the following: “The count reads upon that application [the earlier Pierotti application] and the only difficulty was that the valve construction of the motor apparently was not operative. * * * ” ,
Then followed what the majority quoted. It was therein held by the board that one skilled in the art could have remedied the difficulty without the exercise of inventive genius.
Upon petition for reconsideration, the board, on the subject of estoppel, said in part:
“ * * * The party Pierotti, in his earlier application, when notified that the disclosure was insufficient, promptly filed another application as a continuation-in-part in order to provide a more detailed disclosure. In the Hemphill case, the applicant not only continued the prosecution through the Office but appealed to the Court. When this failed, he filed another application and presented the same question to another Court. This, on its face, would seem to be an objectionable procedure.
“It is believed, however, that where some question arises as to the insufficiency of an application, an applicant should be encouraged, rather than penalized, for promptly^ filing a more complete application, particu *888 larly as the chance of a priority question being involved, according to the law of averages, is relatively slight. It is our opinion, therefore, that the party Pierotti is not estopped from a consideration of his earlier application on its merits.”
The count was suggested for interference purposes by the Primary Examiner. It is very broad — so broad that if the original disclosure of Pierotti was inoperative, the count calls for an inoperative device. The examiner found the count allowable, and the board found that it read squarely upon the original disclosure of Pierotti.
Pierotti was not concerned with a reversing valve per se. Such valves were old in the art, as shown by the instant record. The invention of the count suggested by the examiner is in the broad combination of elements. It was unnecessary for Pierotti to have explained in his later application the working of the valve, which was old in the art and whose functions were well understood by everyone familiar with such valves! He, in the continuing application, met the objection raised by the Patent Office by explaining the working of the valve which the Patent Office must have well understood, and that brought about the holding that his explanation was new matter and that he disclosed an inoperative structure without the new matter. The board thought that an applicant under such circumstances should be encouraged rather than penalized. So do I. Such super-technical holdings under circumstances such as are at bar are unjustifiable.
I think the board was right in holding that under such circumstances, for interference purposes at least, the clear disclosure of all the elements of this count in the original application of Pierotti ought to be regarded as sufficient to constitute a reduction to practice. Obviously, Lavin is not the first inventor. Is he to obtain this count in his application ?
It seems to me that regardless of the correctness of the conclusion- as to when an applicant is estopped by his failure to appeal from a Patent Office ruling, the disclosure of the original application should be sufficient for the purpose of interference. In other words, he prevents the second inventor from getting a claim to a structure which he did not first invent.
If Pierotti had won this interference, it would not necessarily follow that the doctrine of estoppel might be applied to him in the ex parte consideration of his application. If he were held estopped under such circumstances, he would have the right to appeal and present the issue to a court.
I think the decision of the board was right, and it should be affirmed.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9638135. Public record. Not legal advice.