The opinion
BLAND, Associate Judge
(dissenting).
It is not necessary for me to recite the facts involved in this interference proceeding since they are stated in the majority opinion and are, also stated in the original ex parte Chase Case.
Appellant Avery’s contentions here are that the present record makes it clear that the former Chase Case was erroneously decided and that controlling facts which appear in this record were not disclosed in the former record. While it may be said that the instant record makes clear certain facts which were not so clear in the former record, it is not thought that the differences between' the records affords any justification for arriving at a conclusion different from that which the court arrived at in the ex parte case, unless we are of the opinion that the court erroneously failed to apply the doctrine of estoppel in that case.
Appellant has pointed out in his very elaborate brief what he regards to be the important features of the original Chase Case which he contends are out of harmony with the decisions of this and other courts and frankly urges that this court change its former conclusion. He points out that, as evidenced by various publications, including articles appearing in the Journal of the Patent Office Society, which cites •the report of the Patent Office Advisory Committee made to the Secretary of Commerce ( 448 O.G. 267 ), the decisions of this court and of the Court of Appeals of the District of Columbia (now the United States Court of Appeals for the District of Columbia), on the subject of estoppel under Rule 109, have led to great uncertainty and confusion in interference practice.
In view of the considerations to which appellant' has alluded, I agree that it is important in the decision of this case to review the whole question of the so-called doctrine of estoppel which has developed in connection with Rule 109 of the Patent Office. This will necessarily require a consideration of the history of the development of the doctrine.
Estoppels are not favored by the courts because they prevent the proving of the truth- and should be applied only in very elear cases. The principle applied by the Patent Office to the Chase application during its ex parte consideration is the outgrowth of a doctrine which was, as far as I have been able to discover, first invoked a third of a century ago by the Court of Appeals of the District of Columbia in Blackford v. Wilder, 28 App.D.C. 535 . The court held that the party Wilder was not entitled to the allowance of claims in an application because of the fact that he was estopped from claiming ex parte that which he had lost in a prior interference, which interference had been finally adjudicated by the court. It was there stated that it would be presumed that all matters had been adjudicated in the original holding which could have there been adjudicated. The estoppel was there clearly based upon the doctrine of res judicata. This doctrine is a very old one and one which had been definitely and clearly announced by the Supreme Court of the United States in Nesbit v. Independent *215 District, 144 U.S. 610 , 12 S.Ct. 746 , 36 L.Ed. 562 . (The last-cited case is the basis of the decision in Blackford v. Wilder, supra.)
Without going into too much detail in the way of citation and discussion, it is fair to state that a consideration of the cases subsequently decided by the Court of Appeals of the District of Columbia discloses that the doctrine of res judicata was not only extended but a kind of equitable doctrine was also applied. The latter was to the effect that where one avoided a test of priority at a time when he had the right to speak and claim priority, it would be inequitable to allow him to claim in an ex parte proceeding that which he had refused to claim and assert priority to when he had the opportunity to do so. But, in every instance, in the early development of the doctrine there had to be certain elements present. The estoppel in pais was declared to exist where there was a statement, admission or act by one of the parties which was inconsistent with his later claim of priority, and where the statement, admission or act made by him was relied upon by his opponent to the latter’s injury. If any one of these elements did not exist, there was no estoppel.
Now, it must be conceded that this court and the Court of Appeals of the District of Columbia have gone further in applying these doctrines to questions comparable to the one at bar than have the courts in any other jurisdiction. It has been held in substance that if one’s application has been in an interference with another and he fails to bring forward an assertion of priority of claims therein, he is estopped in his ex parte prosecution from claiming that invention, even though all the elements of the true doctrine of equitable estoppel or estoppel by reason of res judicata are not present. Moreover, in Re Brashares, 74 F.2d 751 , 22 C.C.P.A., Patents, 873, it was held that a party to an interference was not only required to bring forward other claims of the application actually in interference, but any other claims in any other application which he might own, and we may say further that this court has gone so far as to hold that he will be estopped unless he brings forward the claims of an application not in the interference even though all the parties to that interference cannot make the counts and even though it be necessary to set aside an issue for another interference between the parties who can make the counts. This misnamed estoppel is based upon the premise that the party did not comply with Rule 109. This is not only the holding of some of the decisions of this court but of some of the decisions of the Court of Appeals of the District of Columbia, our predecessor in this jurisdiction. The doctrines announced in these cases obviously are not based either upon res judicata or estoppel by reason of inequitable conduct. Res judicata has been applied where there was no identity either of the parties or issues and also where there was no finality of judgment, as well as in cases where it was impossible to have adjudicated the particular issue involved. The so-called equitable principle has also been applied in cases where there were no such facts as to make the well-known equitable doctrine applicable. Outside of the holding in these decisions, there is no warrant in law for denying the first inventor a patent because he has not taken advantage of an opportunity offered by a Patent Office rule.
At the time Blackford v. Wilder, supra, was decided, there was no rule in the Patent Office which entitled an applicant to bring forward all his claims in an application and submit them in a priority contest. Recognizing the force and importance of that decision, based squarely upon the settled doctrine of res judicata, the Patent Office adopted a rule — 109—which said in substance that an applicant in an interference proceeding may by motion bring forward claims. This, of course, meant claims in the application involved. Later (July, 1927), the rule was amended, stating that the party may substitute any other application owned by him. It was then only a short step until the Patent Office began holding that the applicant was estopped from obtaining his claims if he did not bring them forward under the permission granted by the rule, even though the case lacked the elements necessary for either the doctrine of estoppel based upon res judicata or inequitable conduct. This was more than a distinct extension of the doctrine. It was, as I am being forced to conclude, the creation of a bar to the obtaining of a patent, which was neither warranted under the statute nor sanctioned by the settled principles of law. From this quickly developed practice there was started a line of holdings which are now being followed and extended to such a degree as to call for a reinvestiga *216 tion of the whole question by everyone interested in patent jurisprudence.
For reasons which will presently appear, rule 116 of the Patent Office was amended in 1934.
In White et al. v. Ovaitt, 1923 C.D. 18, the Commissioner of Patents had held that the senior party in an interference, which had been dissolved without an award of priority, was barred from thereafter asserting broader claims by reason of his failure to comply with rule 109. In re Capen, 43 App.D.C. 342 , was relied upon for supporting authority. This court in Re Alexanderson, 69 F.2d 541 , 21 C.C.P.A., Patents, 983, in a case where the interference had been 'dissolved before there was a final award of priority, had held that the senior party was estopped from claiming that which he 'could have sought to obtain in the interference in which he was engaged.
In October 1934, in a report of the Patent Advisory Committee to the Secretary of Commerce, supra, attention was called to this situation in the following language:
“The situation thus developed in the practice may lead into a dilemma.
“(1) To deny a party participation in an interference when he fails or refuses to assert or reveal his claim within the times provided, and where his activities constitute a bar to another, may result in an award of priority in favor of an issuance of a patent to one who is not the first inventor and who is not entitled to the patent.
“(2) To admit to participation in an interference a party who is barred (by his own laches or failure to comply with orderly procedure) from receiving the patent is to give a pure right of opposition, i. e., a right of opposition not coupled with a claim, and that is not sanctioned by law.
“While it would appear that the proper administration of the law requires strict compliance of a party with the regulations requiring him to assert or reveal his claim within the time prescribed or permitted by the practice — otherwise the practice degenerates into chaos — nevertheless it would appear that invariable forfeiture of rights, regardless of circumstances, is an exceedingly severe application of the doctrine not consistent with the doctrines of equity upon which it rests. It is believed that a treatment of each case upon its own facts by or under the authority of the Commissioner of Patents will evolve a proper procedure mitigating the severity of the practice as heretofore adopted and avoiding the dilemma above pointed out, which procedure may, when evolved, be cast into the form of a rule.
“Your committee, after long and intensive consideration of the matter, has therefore arrived at the following conclusions :—
“(1) That in general, where a party is tardy in asserting an interfering claim to. subject-matter or to dates, the particular facts should be considered in determining whether and to what extent the party is-under default so that the doctrine of estoppel should be applied. However, having regard to the numerous factual variations which may be encountered, it is questionable whether a rule of universal application can be safely laid down. Therefore, the members of the committee, although being in general accord as to the principles which should govern, are making no recommendation as to this branch of the problem, in the absence of a solution that they feel to be entirely satisfactory.
“(2) That in the particular case where-an interference is terminated by dissolution without an award of priority a rule limiting the application of the doctrine of estoppel may properly be made.
“Accordingly, your committee has already recommended and received your approval of a revision of rule 116, and rule 116 as so revised went into effect August. 21 of this year [1934], With regard to. estoppels arising out of cases in other categories, your committee is not prepared to-make final recommendations but still has. the matter under consideration.”
The new matter added to rule 116 reads, as follows:
“116. * * *
“The termination of the interference by-dissolution under rule 122 without an, award of priority shall not disturb this-presumption, and a party enjoying the-status of a senior party with respect to. any subject-matter of his application shall not be deprived of any claim to such subject-matter solely on the ground that such, claim was not added to the interference by.amendment under rule 109.”
*217 Now, at last we have a situation wherein the Patent Office by rule decides under what circumstances estoppel will be applied. It makes no difference what the courts think about the inequitable conduct of the party or whether or not the necessary elements exist which make the doctrine apply. The Patent Office in order to get away from a fast-growing intolerable situation has been persuaded to assert by rule that under at least one statement of facts there will be no estoppel applied. It is now suggested by the majority that rule 109 might be amended so as to make the decisions of the courts harmonize. I take this to mean that if the Patent Office wants to further get away from certain undesired results from the application of the doctrine of estoppel by virtue of failure to act under rule 109, the said rule 109 may be so changed as to modify the requirement with reference to copying claims. This subject matter prompts the observation that if the action of the Patent Office in the adoption of rule 116 constitutes a valid and effective rule, the adoption of further rules along this line would accomplish the same purpose without destroying the desired effectiveness of rule 109 to accomplish the purposes for which it was originally intended.
It is the view of the majority that in the instant case Chase, having failed to bring forward certain claims of an application not in the original seven-party interference, and irrespective of the showing that he clearly was the first inventor, and irrespective of the fact that Avery admits he is not the first inventor and in any event could not have a valid patent for the subject matter of the interference counts here involved, Chase should be es-topped, not because of the doctrine of res judicata, because it is obvious that it does not apply, and not because of the application of the strict doctrine of equitable estoppel, because clearly Avery has shown no damage, admits that he cannot have the patent and that Chase is the first inventor, but for the reason that Chase has failed to comply with rule 109. Just here, let it be observed that the Patent Office has made no rule which states that in the ex parte prosecution of a patent application a party will be denied claims upon the ground of estoppel if he did not take advantage of the opportunity extended by rule 109 and bring these claims forward in a prior interference. If the Patent Office has the lawful right to determine one’s rights under the doctrine of estoppel by the adoption of rule 116, it also has the perfect right to adopt and promulgate a rule which would inform inventors that if they did not bring their claims forward as they are permitted to by rule 109, they will be estopped when claiming the invention in an ex parte proceeding.
In Severson v. Olson, 64 F.2d 694 , 20 C.C.P.A., Patents, 946, and elsewhere, this court said that it would not extend the doctrine of equitable estoppel or the doctrine akin to equitable estoppel which has many times been announced (first in Mason v. Hepburn, 13 App.D.C. 86 ), and I think the courts, and especially this court, have very carefully guarded against its extension. The application of the doctrine denies the right of the first inventor to claim that which he has invented. It is based squarely upon equitable considerations. It seems to me that there are more persuasive reasons for calling a halt to the unwarranted and unusual extension of the so-called doctrine of estoppel when applied by reason of Rule 109 than there was for refusing to extend the Mason v. Hepburn doctrine. It seems to me that the particular facts at bar suggest the necessity of halting the unwarranted extension of the doctrine at this point.
The facts in the case at bar are unlike the facts in any case in the books anywhere. We pointed this fact out in the ex parte decision. Some of the parties in the seven-party interference could not make the counts. The particular issue between the appellant and the appellee at bar could not have been adjudicated in that interference. Another interference would have had to be declared. Unless the doctrine of estoppel based upon res judicata is greatly extended (and I fear that it has been) it could have no application to this kind of case. In the ex parte Chase Case, however, we alluded to this fact together with the additional fact that the application involved in the seven-party interference was not the application which the appellant is charged with not bringing forward. Moreover, we there called attention to the fact that while the seven-parly interference was still going on and while it was still possible for Chase, upon a proper showing, to have the second application moved into the interference, the Primary *218 Examiner, while exercising his discretionary power, and for reasons which evidently appeared satisfactory to him, set up the second interference and caused the claims to be copied without requiring any showing or motion. Appellee was so clearly the first inventor that no contest of priority was had at that time or in the same redeclared interference which is now before us. It was the Examiner of Interferences who applied the doctrine of estoppel.
After careful consideration, this court, in Re Brashares, supra, where estoppel was applied, pointed out that the facts in that case were not analogous to those which existed in the ex parte Chase Case.
So, we have a case here where the combined facts are so very different from those, in any other case in the books that if it is the desire not to extend the doctrine, every other case can be distinguished. The language of Mr. Justice Cardozo, although addressed to a different question, in Norwegian Nitrogen Products Co. v. United States, 288 U.S. 294 , 53 S.Ct. 350 , 77 L.Ed. 796 , would seem to aptly apply— “The tokens of intention set down in this opinion have a force in combination that is denied to any one of them alone.” [Page 360.] Let it be remembered that while the motion period had passed, it was still within the discretion of the Patent Office to open up the case, upon a proper showing, and permit a trial of priority on the particular issue between the appellant and the appellee.
The majority opinion states that the Primary Examiner had no right to declare the second interference because when ' he did he knew that Chasé would not be allowed the claims by reason of the fact that he was estopped. Estopped upon what theory? Not because he was trying to avoid a contest of priority. The inventions were so dissimilar in the two applications that the Primary Examiner b.elieved that a separate interference was necessary and declared it. Chase, admittedly the first inventor, came forward in response to the Patent Office request and apparently satisfied everyone concerned that he was the first inventor in fact. What is there about his conduct that is unfair, that is inequitable? Has he attempted to evade a priority contest in claims that he would have lost? Not at all.
Appellant takes the position in this case that a holding with him that Chase is es-topped is not an extension of the doctrine; or at least he argues, in effect, that if it be an extension it is such an extension as is the natural outgrowth of the doctrine and the logical development of it. Right there lies the difficulty with the whole situation. By somewhat plausible argument it is easy to continue to stretch and extend the doctrine until it ceases to remotely resemble the one originally adopted. This fact, I think, I have clearly hereinbefore shown. If this court is of the opinion that it should not extend the doctrine, being an unpopular one, although admittedly a meritorious one in proper cases, it should refuse to extend it to facts not found in the prior decided cases and especially it should do so when those facts are such as to make the application of the doctrine when resting upon res adjudicata or strictly equitable principles inappropriate. The majority states, and they find precedent therefor in our decisions, that the so-called estoppel applied to Chase has its origin in his failure to comply with Rule 109. To my way of thinking, Chase has violated no Patent Office rule. He could have brought forward, under the permissive rule of the Patent Office, these claims at a place and time when he could not have had the issue adjudicated. It might have resulted in the declaration of a new interference. This is exactly the thing that was done. Even if it he conceded that he has violated Rule 109 there is no mandate in it requiring a denial of a patent.
Let us for a moment look at this court’s decision in Re Long, 83 F.2d 458 , 23 C.C.P.A., Patents, 1078. Long, during the pendency of his application, was claiming the invention of the interference, and he had claims standing allowed for this invention. The examiner denied the claims in Long’s ex parte prosecution on the ground of estoppel for the reason'that he had not presented for priority contest claims broader than those he had lost in the interference. The estoppel was stated to rest upon the proposition that the losing pai;ty in an interference proceeding ordinarily cannot be awarded claims broader than those which were awarded to the successful party. The application involved in the interference was not involved in the original interference. We held that the invention involved in the original three-party interference was an improvement on the broad invention disclosed and claim *219 ed in the application in the interference m which he was estopped. It was apparent that the claims were not patentable to the winner Evans or the loser Day. We took the position that the estoppel, if there was one, did not operate in favor of the party claiming it and reversed the board’s decision. What about the instant case ? When Avery conceded that he could not have a valid patent and is therefore not damaged, how can he invoke an equitable estoppel against Chase ? In the Long Case, supra, we said [page 462]:
“In this court the Solicitor for the Patent Office contends that, regardless of whether or not the basis for an equitable estoppel exists, it is the- settled law that, unless appellant, under rule 109, moved to add to the interference claims to the broad subject matter now claimed, the same being broader than the issue of the interference, he is not now entitled to their allowance in the instant application, and relies largely upon In re Rhodes, 80 F.2d 525 , 23 C.C.P.A. (Patents) [816], The Solicitor points out certain distinctions which exist between the instant case and the Rhodes Case, but contends that the distinctions are not material and that the holding of the Board that appellant was not entitled to the claims for the reasons by it stated is abundantly supported by the authorities.
“We know of no case on all fours with the case at bar either in the facts or the principles involved. It would be needless to cite authority for the proposition that in the Patent Office there has been a gradual extension of the so-called doctrine of estoppel. In some of its phases it has been approved by the courts, and in others the application of the doctrine has been rejected. It is well-settled, however, that, if a party to an interference fails to submit subject-matter claimed in the application involved or in other applications belonging to him for a contest of priority where such subject-matter is claimed by his adversary or adversaries, he is afterwards barred from obtaining claims not so submitted or claims broader than the issue of the interference. It furthermore has been held that it is not only his duty to bring forward such subj ect-matter when' the matter is claimed by his adversary, but that it is also his duty to do so when such subject-matter is clearly disclosed by his adversary and not claimed. The latter was our holding, m approving the action of the Patent Office, in Re Rhodes, supra.
“We know of no case, however, where a party losing narrow claims in an interference has been denied broad claims because he failed to present the same in an interference where the subject-matter was not patentable to any one of the other parties, and where they, in claiming an improvement over the broad invention, either disclaimed the broad invention or by their conduct clearly conceded that in any event they could not be regarded as its first inventor.”
In about a dozen cases this court has had occasion to review the decision of the Board of Appeals with reference to its application or failure to apply the doctrine of estoppel arising out of an alleged lack of compliance with the provisions of rule 109. We have reversed the board but twice where it applied the doctrine — In re Long, supra, and In re Chase, supra. If the Chase Case was decided wrong, the Long Case must not be pointed to as the law. The holdings of this court will, therefore, all be’one way as far as results are concerned. Since the doctrine in the instant case has been by the majority extended to facts wholly different from those in any other case, it is not seen how it can be logically contended that the doctrine is not being extended to such a degree that the situation is, to say the least, becoming somewhat alarming. It seems to me that it is obvious that our decisions on this question are not in harmony with each other and, with all due deference to the views of the majority, it would seem to be the part of wisdom to overrule other decisions of this court rather than the only ones which have promised any relief from the growing intolerable conditions.
I deem it proper to make reference to another important and interesting matter. The United States Court of Appeals for the District of Columbia, our predecessor in our present patent jurisdiction, now exercises appellate jurisdiction under section 4915 of the Revised Statutes, 35 U.S. C.A. § 63. It is called upon to consider the same subject matter as we are herewith concerned. In International Cellucotton Products Co. v. Coe, 66 App.D.C. 248 , 85 F.2d 869 , the court seems to have gone back squarely to the principle of res judicata in making application of the doctrine of estoppel for failure to present claims in *220 an interference proceeding. Whether the court in the later case of E. I. Du Pont De Nemours & Co. v. Coe, 67 App.D.C. 42 , 89 F.2d 679 , which did not cite the International Cellucotton Products Co. Case, supra, was a reconsideration of the whole matter, I have no way of knowing. In the Du Pont Case, however, there was nothing to indicate that the whole matter was given renewed consideration or that the holding in the International Cellucotton Products Co. Case was considered or disapproved.
For reasons stated in the ex parte Chase Case, supra, which will be summarized more in detail here, I am convinced that this court is wholly unjustified in reversing the decision of the Board of Appeals which in this proceeding followed our holding in the ex parte Chase Case and declined to apply the doctrine of estoppel. Those reasons may be summarized as follows:
First. Chase is unquestionably the first inventor.
Second. It is conceded that the involved counts would not be valid in a patent issued to Avery. He has, therefore, not been harmed.
Third. The subject matter of this interference is a different invention from that disclosed in Chase’s application in the first interference and the issue could not have been adjudicated in that interference.
Fourth. A. second interference was properly declared by the Primary Examiner. Both parties were offered their day in court and Chase, when called upon, entered the contest and easily showed priority. He therefore is not in the inequitable position of attempting to evade a priority contest and later attempting to claim that which he otherwise would have lost.
Fifth. There having been no adjudication of the issue either actually or presumptively in the first interference and none of the elements of equitable estoppel being present, there is no warrant in law for interposing estoppel as a bar against appellee’s obtaining a patent.
I cannot agree with the majority that there is any basis for estoppel after the Primary Examiner in the exercise of his discretion had set up the second interference.
GARRETT, Presiding Judge, concurs in the foregoing dissenting opinion.