Transcript of Record — United States Ex Rel. Lowry v. Allen

TRANSCRIPT OF RECORD.

|

SUPREME COURT OF THE UNITED STATES.

OCTOBER TERM, 1906.

No. && OO.

THE UNITED STATES EX REL. GEORGE A. LOWRY AND

PLANTERS COMPRESS COMPANY, PLAINTIFFS IN

ERROR,

vs.

FREDERICK I. ALLEN, COMMISSIONER OF PATENTS.’

IN ERROR TO THE COURT OF APPEALS OF THE DISTRICT OF

COLUMBIA.

FILED JUNE 23, 1905,

(19,813.)

(19,813.)

SIPREME COURT OF THE UNITED STATES

OCTOBER ‘TERM, 1005.

No. 31}.

THE UNITED STATES EX REL. GEORGE A. LOWRY AND

PLANTERS COMPRESS COMPANY, PLAINTIFFS IN

ERROR,

Us.

FREDERICK I. ALLEN, COMMISSIONER OF PATENTS.

IN ERROR TO THE COURT OF APPEALS OF THE DISTRICT OF

COLUMBIA.

INDEX.

Page.

Transcript from supreme court of the District of Columbia...... 0 0... 60> 1

MN cdi jculenaanacee ii x4 Feeaeta tHenvees Hn ees ores e °ohe CESS See 1

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Exhibit A—Decision of examiners-in-chief on motion to dismiss ap-

DORE. cc cccsee esarceveccererseccerra sosessceres S03 5

B—Petition to Commissioner of Patents ...---+++++55- +++ 9

C—Decision of Acting Commissioner of Patents. ........++: 10

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Marshals return... .cccccccecccccccssesccrccerseerree® ee eek 11

Return sf espondent Edward B. Moore......-+-++-++sss0ss ssorstrees 12

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Exhibit C—Certified copy from Patent Office of petition of Geo. A.

Lowry, filed November 29, 1904... ++eeeeee eres rene 16

D—Certified copy of decision of Commissioner of Patents, De-

cember 6, 1904......-+++ eR Peer en re 19

II INDEX.

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“SUPREME COURT OF THE DISTRICT OF COLUMBL,

Tur UNrrep STATES OF AMERICA EX

relatione George A. Lowry and Plant-

ers Compress Company, Relators,

UR,

Freperick |, ALLEN, COMMISSIONER

of Patents, Edward B. Moore, Assist- '- No. 47053. At Law.

ant Commissioner of Patents, and

8. W. Stocking, J. H. Brickenstein,

and Thomas G. Steward, board of

examiners in chief, in’ the United

States Patent Office, Respondents.

Unirep States OF AMERICA,

District of Columbia, ss:

Be it remembered that in the Supreme Court of the District of Colum-

bia, at the city of Washington, in said District, at the times hereinafter

mentioned, the following papers were filed and proceedings had in the

above-entitled cause, to wit:

1 Petition for writ of mandamus.

Filed July 7, 1904.

In the Supreme Court of the District of Columbia.

Tue UNirepd STATES OF AMERICA EX RELA- |

tione George A. Lowry and Planters Com-

press Company,

vs.

FrepericK I, ALLEN, COMMISSIONER OF | y; imine

Patents, Edward B. Moore, Assistant Com- “No. 47053. At Law.

missioner of Patents, and 8S, W. Stocking,

J. H. Brickenstein and Thomas G. Steward,

board of examiners in chief, in the United

States Patent Office.

In the matter of the petition of George A. Lowry and Planters Com-

press Company, assignee of seid George A. Lowry, praying for a writ

of mandamus.

And now into this honorable court, by their counsel, Oliver Mitchell

and Edmund Wetmore, come George A. Lowry, of Chicago, Illinois, and

Planters Compress Company, a corporation organized and existing under

_—

—_

2 FREDERICK t. ALLEN VS. THE UNITED STATES.

the laws of the State of Maine, and respectfully ask leave of the court t

file a petition, herewith exhibited, for a writ of mandamus to Phocderieg

I, Allen, Commissioner of Patents, in the United States Paton: Offer

Edward B. Moore, Acting Commissioner of Patents, in the United State.

Patent Office, and S, W. Stocking, J. WH. Brickenstein, and Thon. G.

Steward, constituting a board of examiners in chief in the United stares

Patent Office, and pray the court to direet a rule te be issued ty

2 the said parties to show cause on a day to be fixed by the court

why a writ of mandamus should not issue, commanding said par

ties to cause to be reinstated and to reinstate and take jurisdiction of the

petitioners’ appeal, and consider and determine the same on the merits as

prayed for, and the petitioners pray for such other relief as may be just,

Filed July 7, 1904,

*Supreme Court of che Dist. ct of Columbia,

Ex parte, 47053,

In the matter of the petition of George A. Lowry aad Planters Com-

press Company, assignee of said George A. Lowry, praying for a writ of

mandamus,

To the honorable Supreme Court of the District of Columbia,

The petition of George A, Lowry and Planters Compress Company,

assignee of said George A. Lowry, respectfully shows:

I. That the said Planters Compress Company is a corporation duly

organized and existing under and by virtue of the laws of the State of

Maine, and has a principal place of business at Boston, Massachusetts,

and that it is the sole owner of Letters Patent of the United States, No.

661475, for Bale of Fibrous Material.

II, That said letters patent were applied for by vour peti-

3 tioner, Lowry, January 29, 1897, and before issue, said applica-

tion was assigned to said Planters Compress Company, and the

said Letters Patent, No. 661475, for Bale of Fibrous Material were issued

to your petitioner, Planters Compre: s Company.

IIl. ean information and belief that thereafter an interference was

declared in the United States Patent Office between said letters patent

and the application of William L. Spoon, serial No, 74985, for a bale of

fibrous material, to which interference your petitioner Lowry was, by the

authorities of the Patent Office, made a party.

IV. Upon information and belief that in accordance with the rules

of practice in the Patent Office, promulgated by the honorable Commis-

sioner of Patents, said Lowry, after the declaration of said interference,

moved to dissolve said interference upon the several grounds set forth

in Rule No, 122; that this motion was transmitted to the proper primary

examiner who granted the same; that thereupon Spoon aforesaid appealed

from this adverse decision to the board of examiners in chief, who

affirmed the decision, from which adverse decision said Spoon appealed

to the honorable Commissioner of Patents in person.

| FREDERICK 1, ALLEN Vs. THE UNITED STATES, 5

V. Upon information and betief that subsequently the said Spoon

petitions d the Commissioner of Patents to remand the said interference

to the primary examiner for reconsideration of the question of operative-

yess of the Spoon press to make the issue bale and for leave to tile affi-

davit= i support of operativeness,

VI. Upon information and belief that this petition was granted

| sud thereafter a hearing was had and the primary examination

found the Spoon press operative to make the issue bale, if the

press of Lowry was operative to make the issue bale, and reversed pre-

vions decisions dissolving the interference,

VII. Upon information and belief that thereupon vour petitioner

Lowry appealed frome this decision adverse to his motion to dissolve. the

interterence, to the board of examiners in chief, as provided in section

{x2 and section 4909 of the Revised Statutes of the United States; that

this appeal was duly doeketed and a date set by the board of examiners

in chiet for a hearing thereof,

VILL. Upon information and belief that thereafter said Spoon filed a

motion to dismiss said appeal; that this motion was heard, and that on

the LOth day of May, 1904, the board of examiners in chief rendered a

decision (a copy of which is hereto annexed and made a part hereof) in

which, for the reasons therein stated, the said board of examiners in chief’

holds that it has no jurisdiction to entertain said appeal, and therefore

allows the motion of Spoon to dismiss the appeal.

IX. Your petitioners further show, as they are advised, that under and

according to the laws of the United States governing such matters,

namely, sections 475, 476, 482, 4904, and 4909 of the Revised Statutes of

the United States, it was the duty of the said board of examiners in chief

to entertain and decide vour petitioners’ appeal and the lawful right of

your petitioners as parties toan interference to have the said appeal heard

and deeided,

5 X. Upon information and belief that) subsequently to said

decision of said board of examiners in chief’ your petitioner,

Lowry, petitioned the honorable Commissioner of Patents to direet said

hoard of examiners in chief to hear and determine said appeal of Lowry

and for such other relief as to his honor might seem meet, a copy of

whieh petition is hereto annexed and made a pert hereof.

XI. Upon information and belief that subsequently the honorable

Assistant Commissioner refused, by a decision rendered June 29, 1904,

to grant said petition and declined to give your petitioners any relief,

and a copy of said decision is hereunte annexed anc! made a part hereof.

XII. And your petitioners further show, as they are advised, that they

have exhausted all means in the Patent Office to obtain their legal right

of appeal under sections 482 and 4909 of the Revised Statutes of the

United States.

Wherefore your petitioners pray that a writ of mandamus be granted

by this honorable court commanding Frederick I. Adlen, Commissioner

of Patents, Edward B. Moore, Assistant Commissioner of Patents, and

8. W. Stocking, J. H. Brickenstein, and Thomas G, Steward, constituting

the board of examiners in chief, to cause to be reinstated and to reinstate

and take jurisdiction of your petitioners’ said appeal and to entertain and

consider the merits thereof and decide the same upon the merits.

4 FREDERICK bt. ALLEN Vs. THE UNITED STATES.

And your petitioners pray for such other relief as to this tionorable

court may seem meet and proper.

PLANTERS Compress Company,

By Gronce T. PRanets,

P

6 And your petitioners will ever pray, ete.

Second Views Prosi! vf,

Oniver Mrrcenenr,

Epvcuxp Werwone,

Counsel for Petitioner, George A. Lowrn,

; A.V. CusuM an, Solicitor,

} Stave OF MASSACHUSETTS, | pap ~o

ay {7OD3,

. Suffolk, SS, )

4 George A. Lowry, being duly sworn, says that he is one of the peti-

tioners above named, that he has read the foregoing petition and knows

3 the contents thereof, and that the same is trae of his own Knowledge,

except these matters therein stated to be on information and belief, and

4 ° °

’ as to those matters he believes it to be true,

Betore me,

[SEAL |} ‘ Evererr EB, RENT,

: Notavy Public,

:

Boston, July 2, 1904.

SPATE OF MASSACHUSETTS,

Suffolk, sx.

George T. Francis, ef lawful age, being duly sworn, says that ne is

the second vice-president of the Planters Compress Company, the poti-

tioner above named, that he has read the foregoing petition and knows

the contents thereof, and that the same is true of bis own knowledge,

except those matters therein stated to be on information and belief, and

as to those matters he believes it to be true,

Before me,

[sEAL. | Evererr EK, KEN,

Notary Public.

Boston, July 2, 1904.

i STATE OF MASSACHUSETTS,

County of Suffotk, sx:

Oliver Mitchell, being duly sworn, says that he is an attorney and

counsellor at law and is one of the solicitors for the Planters Conypress

Company and George A. Lowry, petitioners above named, and that he

has read the foregoing petition and knows the contents thereof, and that

the matters of fact therein alleged are true of his own knowledge.

Before me,

Ronerr CusuMan,

[SEAL. | Notary Public.

} FREDERICK 1, ALLEN Vs. THE UNITED STATES. 9

P Exutmir A,

Filed July 7, 1904,

47053,

No, 25704, U.S, Patent Office, May 10, 1904.

Before the examiners in chief, on appeal,

In the matter of the interference between the patent to George A.

Lowry, No, 661475, granted November 6, 1900, on an application filed

January 29, 1897, and the application of William L,. Spoon, filed Sep-

tember 10, L901, division of application filed October 24, 1896. — Inter-

ference No. 21517. Improvements in Bales of Fibrous Material.

Mr. Oliver Ro Mitchell for Lowry.

Mr. Cyrus Kehr for Spoon,

Motion to dismiss appear,

This is a motion to dismiss an appeal taken by Lowry from a decision

of the primary examiner on a motion to dissolve,

The history of the proceedings in this case, briefly stated, is as follows :

Lowry moved to dissolve the interference on the ground that the appli-

cation of Spoon failed to diselose an apparatus operative to produce such

a bale as ealled for by the issue of the interference.

The primary examiner decided that Spoon’s device was inop-

erative.

4 On appeal the examiners in chief affirmed his decision.

Thereupon Spoon took an appeal to the Commissioner, by whom

the case was remanded to the primary examiner for further considera-

tion, Before the primary examiner affidavits were filed and the examiner

ame to the conclusion that Spoon's application did diselose an operative

device, Whereupon Lowry appeals to the examiners in chief from this

decision of the primary examiner.

Rule 124 provides that “From a decision of the primary examiner

afirming the patentability of the claim or the applicant’s right to make

the same no appeal can be taken.”

On the face of the appeal it is apparent that under the rule we have no

jurisdiction.

On behalf of Lowry, however, it is contended that the rule is invalid

and void because inconsistent with law.

The section of the statutes relating to interference proceedings, and the

only section which relates thereto except that providing for an appeal

from the decision of the Commissioner to the Court of Appeals of the

District of Columbia, is sec, 4904.

As to the conduct of an interference proceeding up to the determina-

tion of the question of priority of invention by the “ primary examiner,”

there is no more therein than merely a direction to notify the parties and

direct the primary examiner to proceed to determine the question of pri-

ority of invention. There being nothing in the Statutes to regn-

10 late the proceedings so authorized, it is consistent with the law

thet the proceedings shall be regulated by rules established under

6 FREDERICK I, ALLEN VS. THE UNITED STATES,

the Revised Statutes, sec, 483, such rules having been provided. They

include provisions for conducting an interference proceeding to deter

mine the merits—that is, the question of priority of invention, They

also include rules for determining the validity of adverse decisions made

in interference proceedings on questions not involving the merits. The

raising of other questions than that of priority of invention is, under those

rules, by motions, and a rule provides for appeals from such adverse

decisions on motions as follows:

“124, Appeal may be taken directly to the Commissioner — from

decisions of the primary examiner on all motions except the following:

(1) On motions to dissolve which deny the patentability of applicant's

claim ; (2) on motions to dissolve which deny the right of an applicant to

make the claim; (3) on motions involving the merits of the invention,

Decisions on these motions, when appealable, go to the examiners in

chief in the first mentioned, and upon such appeals the questions shall be

heard inter partes.

“From a decision of the primary examiner affirming the patentability

of the claim or the applicant’s right to make the same no appeal can be

taken.”

In the case before us the appeal is taken by Lowry from the decision

of the primary examiner that the application of Spoon discloses an

apparatus practically operative to produce the bale called for by the

issue.

The question of operativeness, whether raised by a motion in inter-

ference or ex parte proceedings, is essentially whether an applicant has

furnished sufficient basis for the grant of a patent under sec. 4886. The

only real parties to the proceeding are the Patent Office, acting

11 in the interest of the public, and the applicant whose application is

in question. In consonance with this idea, for many years the

applicant’s contestant was not even allowed to appear at the hearing of

an appeal from the adverse decision of the principal examiner upon ques-

tions of patentability or right to make the claim. This practice was

changed by decision of the Commissioner in Westinghouse v. Duncan,

C. R. 1893, p. 12; 66 O.G., 1005, and the rule wes subsequently amended

te conform to this decision. Even now the rule provides only that the

hearing shall be inter partes. The question of operativeness is the same

whether it oceurs in the ex parte or the inter partes consideration of an

application.

The statute, as we understand it, expressly limits the jurisdiction of the

examiners in chief to revising and determining upon the validity of

adverse decisions of the principal examiner, and from his favorable decision,

whether made in ex parte or interference cases, we have no jurisdiction.

On behalf of Lowry, however, it is urged that the present sec. 4909

means that “every party to an interference may appeal from the decision

of the principal examiner * * * to the board of examiners in chief.”

The section reads as follows:

“Every applicant for a patent or for the reissue of a patent, any of the

claims of which have been twice rejected, and every party to an interfer-

ence, may appeal from the decision of the primary examiner, or of the

examiner in charge of interferences in such case, to the board of examiners

in chief; having once paid the fee for such appeal.”

I. ALLEN VS. THE UNITED STATES, 7

FREDERICK

The construction which counsel for Lowry attempts to put upon

]2 this section of the statutes seems to us to be in direct contradie-

tion of the Revised Statutes, see. 482, which defines the duties of

the examiners in chief. We fail to find in the history of this section

any indication of an intent by Congress to change the powers of this

tribunsal.

By the act of 1861 it was enacted that there should be appointed by

the President three examiners in chief, whose duty it shall be, on the

written petition of an applicant, to revise and determine upon the valid-

ity of decisions made by an examiner when adverse to the grant of let-

ters patent, and also to revise and determine in like manner upon the

validity of decisions of examiners in interference cases.

At that time there was no special examiner of interferences, but each

examiner decided such interferences as included applications which had

been assigned to him for examination.

This act was followed by the Patent act of 1870. This act provided

that there should be in the Patent Office three examiners in chief (sec,

476), whose duties were defined by see. 482 to be on “the written peti-

tion of the appellant to revise and determine upon the validity of the

adverse decisions of examiners upon applications for patents, and for

reissues of patents, and in interference cases,”

The substitution of the term “appellant” in place of “applicant” was

evidently made for the sake of accuracy. In ex parte cases rejected for

failure to comply with the requirements of sees. 4886 and 4916

13 the appellant was always an applicant, but in interference USES,

where one of the parties might have a patent, the appellant might

be a patentee and not an applicant.

The sections of the statutes which provide for appeals to the exami-

ners in chief are sees. 4904 and 4909,

Section 4904 provides as follows:

“Whenever an application is made for a patent which, in the opinion

of the Commissioner, would interfere with any pending application, or

with any unexpired patent, he shall give notice thereof to the applicants,

or applicant and patentee, as the case may be, and shall direct the

primary examiner to proceed to determine the question of priority of

invention, And the Commissioner may issue a patent te the party who

isadjudged to be the prior inventor, unless the adverse party appeals

from the decision of the primary examiner, or of the board of examiners

in chief, as the case may be, within such time, not less than twenty days,

as the Commissioner shall prescribe.”

The “primary examiner” in this section is the “examiner in charge

of interferences” referred to in sec. 440 and see. 4909,

Section 4909 has been quoted above.

Under sec, 4909 the decision of the primary examiner is the decision

of the question of priority, and that is the only matter upon which

appeal can be taken under this section of the Statutes, See Westinghouse

v. Dunean, C, D. 1894, p. 170; 66 O. G., 1009, and Painter v. Hall, 83

0. G., 1803; C. D. 1898, p. 91.

This whole matter is discussed in this last decision, to which attention

is particularly called, and in which it is stated :

“The motion to dissolve on the ground of nonpatentability or that

23388—05——2

8 FREDERICK I. ALLEN VS. THE UNITED STATES.

one of the parties has no right to make the claim is heard inter partes

by the primary examiner as a matter of office policy in order that

the facts and reasons which, in the opinion of the moving party, negative

the patentability of the claim or show that his oppo ent is pot

14 entitled to make the claim may be clearly presented; hut. the

office does not and can not recognize the moving party as a party

in interest entitled to contest the patentability of another's claims. Hp

has no right to appeal from a decision denying his motion. His position

is not unlike that of amicus curize, the same reasons which justify the

rule which refuses the right of appeal from the decision of the primary

examiner affirming patentability or the right of the respective parties to

make the claim justify the office in refusing to permit the appeal taken

by the party whose claims are affected to be made a contest inter partes

before the appellate tribunal.”

There are, of course, innumerable decisions denying the right of appeal

from a favorable decision of the examiner. See, for example, White y,

Thomson, 101 O. G., 2825; Fuller v. Brush, 16 O. G., 1188; Faure y,

Bradley et al., 40 O. G., 243; Faure v. Bradley et al., 44 O. G., 945;

ex parte Ferguson, 56 O. G., 1334; Kane v. Brill & Adams, 84 O. (i,

1142; Miller vy. Kelley, 84 O. G., 1144; Holt v. Ingersoll, 84 0. G,

1873; Stupakoff v. Johnson, 84 O. G., 982; Edison vy. Stanley, O. D,

1891, 173; Sharer v. McHenry, 91 O. G., 1034; Meyer v. Sarfert, 9%

O. G., 1037; Ross v. Scott, 96 O. G., 842; Niedermeyer v. Walton, 9%

O. G., 1707.

As we understand the statute, it means that the examiners in cinet are

called upon (1) to determine upon the validity of adverse decisions of 4

cian examiner who has twice rejected the claims of an application

for patent; (2) adverse decisions of a principal examiner who has

15 twice rejected the ciaims of an application for reissue of a patent

(see. 4909); and (3) decisions of the examiner in charge of inter-

ferences upon the question of priority (secs. 4909 and 4909). If there

had been any intent on the part of Congress to provide for appeals from

favorable decisions of examiners, there would have been some express

provision of the statutes to that end. There is no such provision; on

the contrary, sec. 482 limits the jurisdiction of the examiners in chief to

determining upon the validity of adverse decisions of examiners of all

kinds.

Sec. 4909 provides for appeals from the primary examiner only when

the claims have been rejected.

Sees. 4910 and 4911, and sec. 9 of the act of February 9, 1893, pro-

vide for appeals to various tribunals.

If Lowry’s contention is correct, then every party to an interference

may appeal from any decision of a primary examiner to the Court of

Appeals.

The whole theory of action of the Patent Office under the clause of

Rule 124, which provides for no appeal from a favorable decision of the

examiners on a question affecting the rights of an applicant to make the

claims and the patentability of the claims, and such questions as aris

under secs, 4886 and 4916, is that in the ordinary course of proceedure,

if the primary examiner decides that the claims are allowable, there is

no provision for a review of his favorable decision.

FREDERICK 1. ALLEN VS, THE UNITED STATES, y

It has been regarded as the policy of the patent statutes to

16 grant a patent wherever any tribunal of the Patent Office found

the claims of an application to be allowable, It seems to us

incredible that if Congress had intended that this long-established policy y

should be changed merely because an applicant became involved in an

interference the statutes should not have e xpressly provided for such a

contingenc’ v.

Our conclusion is that Rale 124 is valid and in accord with the law,

and accordingly we hold that we have no jurisdiction over the appeal

taken by Lowry from the decision of the primary examiner, od the

motion made by a to dismiss the appeal of Lowry is granted and

the appeal is accoré ingly dismissed,

J. H. BrickeNnsTeIn,

S. W. Srocki na,

Examiners in Chief.

Iam of the opinion that the appeal should be dismissed for lack of

jurisdiction under the rules,

T. G, STEWARD,

Kraminer in Chief,

17 Exuipir B.

Filed July 7, 1904.

In tHe Unirep States PATENT OFFice,

George A, Lowry }

om >47053. Interference No, 25704.

Winiiam L, Spoon.

Petition to the Hon, Commissioner of Patents,

Your petitioner, George A. Lowry, one of the parties to the above-

entitled interference, respectfully represents that the above-entitled inter-

ference was declared Dec. 17, 1901; that upon motion by Lowry to

dissolve, duly made and transmitted, the motion was allowed by the

primary examiner, and upon Spoon ’s appeal to the examiners in chief from

this decision the decision was affirmed, and from the decision of the

examiners in chief Spoon appealed to the Hon. Commissioner. That

pending this appeal the C ommissioner, upon Spoon’s petition, remanded

the interference to the primary examiner for further consideration of the

question of operativeness; that thereafter the primary examiner denied

the motion to dissolve; that upon a petition of Lowry to transmit the

interference to the board of examiners in chief for review of their previous

decision, the Hon, Commissioner denied the petition and dismissed Spoon’s

preceeding appeal to the Commissioner; that subsequently Lowry moved

for rehearing; that this motion was allowed; that rehearing was

1s was had, and on the 21st day of March, 1904, the decision of the

Commissioner of rehearing affirming his previous decision; that

on the 8th day of April, Lowry appe: aled from the decision of the primary

examiner to the board of examiners in chief under sections 482 of the

10 FREDERICK I. ALLEN VS. THE UNITED STATES.

act of 1870 and under section 4909 of the Rey. Statutes of the United

States; that this appeal was docketed by the board of examiners in chief

and hearing set thereon for May 25, 1904; on April 20, 1904, Spoon

moved to dismiss Lowry’s appeal and that, May 10, 1904, the board of

examiners in chief allowed the motion of Spoon.

Wherefore your petitioner prays that your honor will direct said board

to perform the duty laid upon them by law, and for such other and

further relief as to your honor may seem meet.

GEORGE A. Lowry,

By his attorney, OLIVER Mrrciuen.,

19 Exuipir C,

Filed July 7, 1904.

Intf. No. 21517. N. L. M

May 20, 1904. (IE. E.G.)

Unrrep Sratres Patent OFFICE,

Lowry v. Spoon. 47053,

Bale of Fibrous Material,

PETITION,

Patent granted George A. Lowry November 6, 1900, No. 661475.

Application of William L. Spoon filed September 10, 1901, No. 74985,

Division of application No. 609902, filed October 24, 1896,

Mr. Oliver R. Mitchell, for Lowry.

Mr. Cyrus Kehr, for Spoon.

This is a petition by Lowry, asking in effect that the examiners in

chief be directed to hear and determine his appeal from the primary

examiner’s decision denying his motion to dissolve the above-entitled

interference,

The motion was made on the ground that Spoon has no right to make

the claim of the issue, since his device is inoperative. The examinei’s |

decision was in favor of Spoon’s right to make the claim, and —

20 under the express provisions of rule 124 no appeal lies from his |

decision. Lowry recognizes this, but patirede. that the rule is

inconsistent with the statute and is invalid. He calls attention to the

fact that section 4909, R.S., is broad in its terms, saying “‘every party

to an interference may appeal,” and argues therefrom that he is entitled”

to appeal from any decision in an interference with which he is not satis- |

fied. A similar contention was made before the Court of Appeals in

Westinghouse v. Duncan, 66 O. G., 1009, and the court expressly ruled

to the contrary, saying:

“Tn our opinion it was not the intention of Congress in the employ- ”

ment of the general terms of the statute, to grant the right of appeal to

this court from mere interlocutory or preliminary orders or rulings in

interference proceedings.”

The court has further ruled that decisions upon motions to dissolve

constitute interlocutory or preliminary orders, and in the recent case of

FREDERICK I, ALLEN V8. THE UNITED STATES. ll

Mark v. Greenawalt, decided May 11, 1904, it dismissed for lack of

jurisdiction an appeal from a decision on a motion holding that one of the

sarties had no right to make the claim of the issue.

The rule prohibiting an appeal from a decision upon a’ motion holding

that a party has the right to make the claim of the issue is in accordance

with the practice which has prevailed in this office for many years and

has the support of all decisions of the courts which have been rendered

on the subject. There seems to be no reason for regarding it as incon-

sistent with the statute. It seems very clear that the decision in this

21 case is not a final adverse decision, since it is not a ruling that

Lowry is not entitled to his patent. That is a matter which may

be determined in the further proceedings, and therefore it is clear that the

decision relates to a mere interlocutory matter.

The petition is denied,

KE. B. Moore,

Acting Commissioner

99 Rule to show cause.

Filed, July 7, 1904.

In the Supreme Court of the District of Columbia.

Tue Unrrep Srates OF AMERICA EX RELA- )

tione George A. Lowry, et al.

UKX,

Freperrck I. ALLEN, COMMISSIONER OF Pat- ! ,- ane ee

ents; Edward B. Moore, Assistant Commis- No. 47053, At law.

sioner of Patents; S. W. Stocking, J. H.

Brickenstein, Thomas G. Steward, board of

examiners in chief.

On reading the petition for the writ of mandamus in this cause and

upon considering the same it is this 7th day of July, 1904, ordered:

That the defendants show cause herein on the 18th day of July, 1904, at

10 o’clock a, m., before this court why the said writ of mandamus should

not issue as prayed,

Provided that a copy of this order and petition be served on the

defendants on or before the 9th day of July, 1904,

ASHLEY M, GovuLp,

Associate Sustice.

Marshal's return,

Served copy of within rule and copy of the petition in this cause on

defendants as follows:

23 Frederick I, Allen, Commissioner of Patents, by service on

Edward B. Moore, Acting Commissioner; Edward B. Moore,

Assistant Commissioner of Patents; 8. W. Stocking and J. H. Brick-

enstein, of the board of examiners in chief, July 7, 1904; on defendant

Thomas G. Steward, of said board. ,

July 8, 1904. :

AULICK PALMER, Marshal.

B.

12 FREDERICK I, ALLEN V8. THE UNITED STATES,

Return of respondent Edward B, Moore.

Filed July 14, 1904,

In the Supreme Court of the Distriet of Columbia.

Tue Unirep States or AMERICA EX RELA-

tione George A, Lowry and Planters’ Com-

press Company

vA,

FrepericK [, ALLEN, COMMISSIONER OF Pat-

ents; Edward B. Moore, Assistant Commis-

sioner of Patents, and S, W. Stocking, J. H.

Brickenstein, and Thomas G, Steward, board

of examiners in chief, in the United States

Patent Office.

To the honorable the Justices of the Supreme Court of the District of

Columbia:

The return of the respondent Edward B, Moore, Assistant

24 Commissioner of Patents, to the rule to show cause issued herein

upon the 7th day of July, 1904,

The said Edward B. Moore, Assistant Commissioner of Patents, comes,

and for answer to the order to show cause why the said writ of mandamus

should not issue says, upon information and belief:

1, The respondent he an the allegations of the first paragraph of the

petition,

2. The respondent admits the allegations of the second paragraph of

the petition.

3. The respondent admits the allegations of the third paragraph of

the petition,

4. The respondent admits the allegations of the fourth paragraph of

the petition.

5. The respondent admits the allegations of the fifth paragraph of

the petition,

6. The respondent admits the allegations of the sixth paragraph of

the petition,

7. The respondent admits that Lowry filed an appeal to the examiners

in chief from the decision of the primary examiner refusing to dissolve

the interference, but denies that such appeal was provided for or author

ized by sections 482 and 4909 of the Revised Statutes, or by any other

section of the statutes,

8. The respondent admits the allegations of the eighth paragraph of

the petition.

%. The respondent denies that it was the duty of the examiners

2 in chief to entertain and decide the petitioners’ appeal and denies

that the petitioners were entitled to have the appeal heard and

decided, He avers that the primary examiner’s decision was not the

rejection of a claim ora final adverse decision in the interference, but

was a mere ruling upon an interlocutory motion and was not appeal-

able. He further avers that the decision was not adverse to Lowry’s

claimed rights as the patentee, since that is the very matter to be deter-

mined in the interference proceeding which the primary examiner ref 2

No. 47053. At law,

FREDERICK I. ALLEN VS. THE UNITED STATES. 15

to dissolve. Lowry will have the right of appeal, if at all, only in case

the final decision in the interference is adverse to him.

10. The respondent admits the allegations of the tenth paragraph of

the petition. ;

11. The respondents admits the allegations of the eleventh paragraph

of the petition.

12. The respondent admits that the petitioners have exhausted all

means in the Patent Office to obtain the right of appeal from the inter-

jocutory decision of the primary examiner at this time and avers that

the right of appeal will not exist unless and until a final adverse decision

is rendered in the interference,

The respondent further says that by reason of the facts hereinbefore

alleged he should be dismissed with his reasonable costs.

{ Epwarp B. Moore.

Joux M. Corr, Attorney.

26 District OF COLUMBIA, ss:

On this day personally appeared before me, a notary public in and for

the said District of Columbia, Edward B. Moore, and made oath that

he is the respondent in the above-entitled cause; that he has read

the foregoing answer by him subscribed and knows the contents thereof;

that the same is true of his own knowledge, except as to the matters

therein stated to be alleged on information and belief, and that as to

those matters he believes it to be true.

Given under my hand this 14th day of July, 1904.

[SEAL | A. M. Busy,

Notary Public for the District of Columbia,

Replication.

Filed July 26, 1904,

In the Supreme Court of the District of Columbia.

Unirep STATES EX REL. George A. Lowry,

and Planters Compress Company,

ve,

Freperick I. ALLEN, Commer, or Pats., Ep- > No, 47053. At Law.

ward B. Moore, Asst. Comr. of Patents, 8. W.

Stocking, J. H. Brickenstein, Thomas G. Stew-

ard, board of exrs, in ehf.

To the Honorable Justices of the Supreme Court of the District of Columbia,

27 Replication of the relators to the answer of the respondents

herein, filed upon the 14th day of July, 1904,

Now, into this honorable court comes the relators by counsel and, sav-

ing unto themselves all and every right of exception to the apparent

insufficiencies of the answer of the respondents by way of replication to

such answer, say:

1, The relators except to the allegations of the respondents in para-

graph 9 of ‘said return “that the primary examiner’s psec was not a

14 FREDERICK I, ALLEN VS. THE UNITED STATES, 7’

rejection of a claim or a final adverse decision in the interfercnes, byt

Was a mere ruling upon an interlocuto,, motion” and say that such alle.

gations are wholly immaterial and are not in issue in’ this ease, tip the

reason that neither section 482 nor 4909 of the Revised Statutes of the

United States nor any other statute requires that a decision to be Appeal.

able shall be “the rejection of a claim,” nor that it shall be a “tinal”

decision in an interference; nor dees any rule of law or any statute of

the United States provide that a ruling, “mere” or otherwise, tipon an

interlocutory motion is not or shall not be appealable, provided that the

decision affects the substantial rights of the parties or is not otherwise

reviewable, and the allegations of the respondents are therefore insufti-

cient in law to be replied unto; and the relators aver that the action of

the primary examiner was a decision, and that the decision and denial of

the primary examiner touched and affected a substantial right, and that

unless reviewed by the respondents the board of examiners in

28 chief, as required by the relators, no review can hereafter be had ;

and the relators aver that on othe interlocutory questions raised

by motions to dissolve under rule 122 the Patent Office allows thre right

of appeal to both parties, namely, on motions to dissolve on the ground

that no interference in fact exists, and upon motions to dissolve for irregue

larity in declaring the interference, a also upon motions to shift the

burden of proof, and all other interlocutory motions.

2. Further replying, the relators deny the allegation contained jy

paragraph 9 in said reply, “that the decision was not adverse to Lowry’s

claimed rights as a patentee,” and deny the allegation that “that is the

very matter to.be determined in the interference proceeding which the

yvrimary examiner refused to dissolve,” and allege that the first and

Secdimeasl question to be determined in any interference is that the

parties alleged to interfere have the same invention, and that such a

matter is not “the very matter to be determined in the interference pro-

ceedings which the primary examiner refused to dissolve,” but that the

only matter to be determined in the interference proceedings, if they be

not dissolved, is the right of Spoon to a patent, since Lowry has already

a patent, and your relators aver that a decision that an applicant has a

right to claim your relator’s patented invention is a decision adverse to

your relators and affects his substantial interest; and your relators aver

that unless the examiner’s decision upon this question is reviewed at this

stage of the proceedings, no review of the question of invention involved

will be possible at any later stage.

29 And your relators aver that it is wholly immaterial whether or

hot the primary examiner’s decision was an interlocutory matter,

and whether or not such matters are not at common law appealable, since

the relators’ right is based upon statute, and whether that statute be

declaratory or amendatory of the common law is immaterial.

Wherefore your relators do move the court for judgment and for the

issuance of a peremptory writ of mandamus against the respondents not-

withstanding the return of the respondents herein.

Epmunp Wermore,

OLIVER MITrcHeELt,

A. V. CusuMan,

Attorneys for Relators.

FREDERICK I, ALLEN VS, THE UNITED STATES, 15

In the Supreme Court of the District of Columbia.

Unrrep STATES EX REL. George A, Lowry

aud Planters Compress Company

vr,

FrevertcK 1. ALLEN, Commer. or Pats., Ep- | No. 47,053. At Law,

ward B. Moore, Asst, Commr, of Patents, 8.W,

Stocking, J. H. Brickenstein, Thomas G.

Steward, board of exrs. in elif.

Crry oF WASHINGTON,

District of Columbia, sx:

A. V. Cushman, being duly sworn, deposes and says that he is of

mature age and a resident of Washington, Distriet of Columbia.

30 That he is of counsel for George A. Lowry et al. in the matter

of the above-entitled case.

That he has read the replication of the said George A. Lowry et al. to

the answer of the respondents herein.

That the pleading as to matters of faet is of his own knowledge true,

except as to matters therein stated upon information and belief, and as

to these matters he believes the said replication to be true.

Further deponent sayeth not.

A. V. CusuMan,

Sworn to and subscribed before me this 26th day of July, 1904,

[SEAL] H. J. SWRENEY,

Notary Public, D.C.

31 Leave to amend petition,

Filed December 29, 1904,

Supreme Court of the Distriet of Columbia,

Uxirep STATES OF AMERICA, EX RELATIONE,

George A, Lowry, and Planters Compress

Company,

vs,

Freperick I, ALLEN, COMMISSIONER OF Pat- - No. 47053, At law.

ents, Edward B. Moore, Assistant Commis-

sioner of Patents, S. W. Stocking, J. H. Brick-

enstein, and Thomas G. Steward, board of

examiners in chief in U.S. Patent Office.

And now into this honorable court, by their counsel, comes George A.

Lowry, of Chicago, Tlinois, and Planters Compress Company, a corpo-

ration organized and existing under the laws of the State of Maine, and

pray leave of the court to amend their petition herein as follows, the

amendments being agreed to by counsel for the respondents :

Ist. In the second line of the 11th paragraph of said petition, after

the word “ Honorable” insert “ Acting.’

16 PREDERICK {. ALLEN VS. THE UNITED STATES, a

2nd. By inserting after paragraph XI the following:

X Ia, Upon information and belief, that subsequently to said ducision

of said board of examiners in chief, and subsequently to said decision of

said honorable Acting Commissioner, your petitioner, Lowry,

32 — the honorable Commissioner of Patents t+ direct said

ward of examiners in chief to hear and determine said appeal of

Lowry, and for such other relief as to his honor — seCH tert, a

certified copy of which said petition is hereto annexed and made o pert

hereof, ax Penibit 0d

X1b. Upon information and belief, that subsequently, the honorable

Commissioner refused, by a decision rendered December 6, 1004, to

rant said petition and declined to give your petitioner any relief, a corti-

leo; v of which said decision is hereunto annexed and made o part

hereof, as Exhibit D.

H. A. Crstmas,

Solicitor for Pelition: Se

Onivern Mrrowens.,

Epvuuxp Wervore.

Counael,

The respondents herein consent to the aforesaid amendments,

Joux M. Corr,

Counsel for Reapondents,

33 Exuimr ©,

Usirep Srates or AMERICA,

DEPARTMENT OF THE INTERIOR,

PATENT OFFICE,

To all persons to whom these presenta shall come, grecing:

This is to certifiy that the annexed is a true copy from the records of

this office of the petition of George A. Lowry, filed November 29, 1004,

in the matter of—

Interference, Number 21517, Lowry ex, Spoon, Subject-matter:

Bale of Fibrous Material,

In testimony whereof, 1 have hereunto set my hand and caused the

seal of the Patent Office to be affixed at the city of Washington, this

20th day of December, in the year of our Lord, one thousand nine hun-

dred and four and of the Independence of the United States of America

the one hundred and twenty-ninth,

[SRAL. | F. 1. ALLEN,

Commissioner of Patents,

PREVERICK 1, ALLEN V8. THE UNITED STATES. |

“4 Intf. No, 21517, paper No. 90,

Ix ror Usrrep Stares Parent Orriecer.

Ix ve Isrereeeencr Lowry }

. No, 21517.

Spoos, Bane or Finrowe Marentar. }

Before the honorable Commissioner of Patents.

Now comes George A. Low ry, by counsel, and respeetfally represents

ante vour honor;

That on or about the Sth day of Feb,, 1902, he filed a motion to dis-

eolve the abowe-entitled interference.

That on er about the 23rd day of May, 1902, the primary examiner

rendered a decision granting said motion to dissolve the interference.

That on or about the I4th day of June, 1902, Spoon, the opposing

rty in the interference, appealed to the board of examiners in chief

rom the decision of the primary examiner granting Lanwry’s motion to

dissolve.

That on or about the 15th of October, the board of examiner’ in chief

rendered a decision affirming the primary examiner's decision granting

Lowry’s motion to dissolve.

That on or about the 21st day of November, 1902, Spoon filed a peti-

tion asking your honor to remand the interference to the primary

3 examines to rehear Lowry’s motion to dissolve and pte! new

evidence on the question of the operativeness of his (Spoon’s)

machine to make the bale of the interference issue,

That on or about the 29th day of November, 1002, vour honor granted

Spoon’s petition to remand,

That on or about the 27th day of July, 1905, the acting primary exam

iner, on rehearing, denied Lowry’s motion to dissolve, overruling the

decisions aforesaid of the primary examiner and the bowl of ocaminer

in chief granting Lowry’s said motion to dissel we

That thereafter the said interference was before vou pat

tions, appeals, and motions, filed on behalf of beth parties y

out of the action of the acting primary examine g |

said motion to dissolve.

That on or about the 8th day of April, 1904, sed i

properly and lawfully do so, he (Lowery) filed an app. es ,

vimary examiner’s decision denying his motion t

‘ ying

ence to the board of examiners in chief, in accordance

482 of the act of 1870, and sect, 4900 of the Kew. She i.

cases made and provided,

That on or about the 19th day of April, 1904 a motion ty dete.

Lowry’s aforesaid lawful appeal to the board of examiner ta choc we

filed by Spoon, the opposing party in the above entitled raterterene:

That on or about the 10th day of May, 1004, the said board of exam

iners in chief did dismiss Lowry’s appeal, aforesaid, notwithstanding his

lawful right to have such appeal entertained, heard, and decided upon the

merits,

36 That on or about the 12th day of May, 1904, he (Lowry did

appeal to the honorable Acting Commissioner of Patents asking

See

5 MA

18 FREDERICK 1, ALLEN VS, THE UNITED STATES,

that the Acting Commissioner direct the board of examiners in chict to

entertain, hear, and decide the aforesaid lawful appeal of Lowry, rong.

fully dismissed by them, and to grant such other relief as seemed proper,

That on or about the 29th day or dune, 1904, the honorable Acting

Commissioner rendered a decision refusing the relief praved for and

refusing to direct the board of examiners in chief to entertain, hear, and

decide Lowry’s lawful appeal to them,

Wherefore Lowry “0 te vour honer in person, wd prays thot a

review of the decisions below denying Lowry his lawful rights be made

by vour honor, that the board of examiners in chief be directed to enter

tain, hear, and decide Lowry’s ap wal aforesaid in conformity with the

law in such cases made and Ae 9 and for such other relief as may

seem proper to your honor,

Respectfully, Grorak A, Lowry,

By Oniver Mrrenens.,

Attorney,

Novemwner 29, 1904,

37 In re Tntf No, 21517, Lowry vs, Spoon, Bale of Fibrous

Material.

Affidavit of service,

Crry or WaAsHINGTON,

District of Columbia:

A. V. Cushman, being first duly sworn, deposes and says that he is

of lawful age and a renidient of the city of Washington, in the District of

Columbia; that he has this day made service of the proceeding on behalf

of George A, Lowry, in the above-entitled interference upon William L,

Spoon, the opposing party, by forwarding to Cyrus Kehr, Empire Bldg.,

Knoxville, Tenn., attorney of record for Spoon, by registered mail, post-

age prepaid, a true and signed copy of the prayers of Lowry to the Com-

missioner of Patents filed herewith, and in support of the averments in

this affidavit he has attached hereunto the registry receipt from the

receiving office at Washington, D.C,

A. V. Cusuman,

Subscribed and sworn to before me this 29th day of November, 1904,

[NOTARIAL SEAL] . A. M. Busy,

Notary Public for A Cc

38 U.S. P.O. vegistry receipt,

Letter parcel No, 32647, P. O., Washington, D. C., Station G,

Received for, registration 11729, 1904, from A, V. Cushman,

Addressed to Cyrus Kehr, Knoxville, Tenn,

——— class postage prepaid, Postmaster, per R. H,

FREDERICK 1, ALLEN Vs. THE UNITED STATES, 19

39 Exuiner D,

United States of Amerie,

PEPARTMENT OF THE INTERIOR, PATENT OFFICE,

To oll persons to whom these presents shall come, greeting:

This is to certifV that the annexed is a true copy from the records of

this office of the decision of the Commissioner, dated December 6, 1904,

in the matter of—Interference, Namber 21517. Lowry vs. Spoon,

Subject-matter, “tale of Fibrous Material,

In testimony whereof T have hereunto set my hand and caused the

wal of the Patent Office to be affixed at the city of Washington, this

th day of December, in the year of our Lord one thousand nine hun-

dred and four, and of the Independence of the United States of America

the one hundred and twenty-ninth,

PsBaL.] F. 1. ALLEN,

Commissioner of Patents,

40 Nov. 16, 1904. No, 21517. M. H.

Intf. No, 21517, Paper No, 92. Commr’s decision, Recorded, vol. 81

page 264,

United States Patent Office,

Lowry ¢, Spoon, Bale of fibrous material.

Petition,

Patent granted George A, Lowry November 6, 1900, No, 661475,

Application of William L, Spoon filed September 10, 1901, No. 74985.

Mr, Oliver R. Mitchell and Mr, A. V. Cushman for Lowry,

Mr. Cyrus Kehr for Spoon,

This is a petition by Lowry that the examiners in chief be instructed

to hear and determine on its merits his appeal from the decision of the

wimary examiner denving his motion to dissolve the above-entitled

interference,

The motion for dissolution was made on the ground that Spoon’s appli-

cation furnished no proper basis for the claims, in that his device as dis-

closed was inoperative, The examiner decided that Spoon’s device was

not inoperative as described in his application, and that therefore

41 there was no bar against the allowance of his patent independent

of such bar as might be shown by the evidence oalinend in the

interference. His judgment therefore was that the interference should

not be dissolved, but should proceed so that the rival claims of the parties

could be determined.

Under the express provisions of Rule 124 there is no appeal to the

examiners in chief from such decision rendered on an interlocutory

motion, It is believed that there is nothing ip that rule inconsistent

with law, and that therefore it has the force of law. The right of appeal

in interferences given in general terms in the statute is a very different

Y se psec INH emus — _ ee ee

20 FREDERICK I, ALLEN VS. THE UNITED STATES.

thing from the right of appeal on all motions in the interference. Ty

permit appeals on motions would multiply litigation and extend the pro.

ceedings in interferences beyond all reasonable limits. It would work

great hardship to parties. The appellate tribunals of this office are no

more required to give cases piecemeal consideration than are the appel-

late courts. The whole case should be ready for appeal when the appeal

provided for by the statute is taken. There seems to be no reason what-

ever for regarding the statute as having a different meaning. Similar

statutes relating to appeals in the courts are universally so construed, and

there seems to be no good reason for applying a different rule of construc.

tion here. There are the same objections to the piecemeal consideration

of cases here as in the courts, and there seems to be no good reason for

concluding that Congress intended to impose that burden upon this office

and upon applicants for patents which it does not impose upon the courts

and litigants there. There is nothing in the wording of the statute which

seems to warrant the conclusion, and, on the contrary, the provision

42 for an appeal in these very cases to the Court of Appeals would

seem to show conclusively that the same rule was intended to

apply as in the courts. The wording of the statute providing for appeal

to the Court of Appeals is almost identical in terms with that providing

for the preceding appeals in this office, and that court has expressly decided

that decisions on motions like that made in this case are not appealable

to it.

It is to be particularly noted that there has been no decision as to the

rival claims of the parties to this interference. It has not been decided

which party is entitled to the patent. If it should at any time be decided

that Spoon is entitled to the patent, Lowry will have the right of appeal,

but until such final decision is rendered the statute gives him no right of

appeal.

It would seem upon general principles of law that Lowry could then

present for determination by his appeal any question which in his opinion

vitally affects the question which party is entitled to the patent. The

. only ground upon which he can reasonably claim the right of appeal on

this motion is that the question vitally affects his claimed right to a

patent, and if it does that, he can raise it at final hearing and contest it

before the various appellate tribunals, including the Court of Appeals.

The refusal to permit the present appeal on motion is therefore not a

denial of an opportunity to have the matter reviewed by the several

appellate tribunals mentioned in the statute.

43 The suggestion by Lowry that the tribunals of this office may

not after final hearing regard the question now raised as vital,

and may not give it weight in deciding his right to a patent, surely does

not furnish good reason for a consideration of it by the several appellate

tribunals in advance of a final decision. Lowry will-have cause for

complaint when the examiners in chief refuse to consider the matter on

.appeal from the final decision, if they do refuse, and he may then have

their decision reviewed by the appellate tribunals, including the Court of

Appeals, and may allege as error the failure to give proper weight to the

question raised by this motion. If error shall be made by the tribunals

of this office, it is to be presumed that the Court of Appeals will set it

right. Lowry is surely not warranted in asking this office to set aside

FREDERICK 1. ALLEN VS. THE UNITED STATFS. 21

all rules of procedure and permit piecemeal appeals on motion merely

because of the fear that the tribunals may overlook or disregard the

question at final hearing.

No good reason is seen for changing the provision in Rule 124 here

in controversy, Which was adopted and approved by a long line of Com-

missioners of Patents, among whom have been some of the ablest patent

lawyers in the country, and which rule has been acquiesced in by patent

attorneys practicing before the Office for the Jast quarter of a century.

It is noted that a petition similar to this one was denied by the

assistant commissioner on June 29, 1904, and that this is in effect

44 a request for a reconsideration of the matter.

The petition is denied.

F. I. ALLEN, Commissioner.

DECEMBER 6, 1904.

Endorsed: Leave to amend the petition herein in the particulars stated,

granted. ;

Harry M. CLABAuGH,

Chief Justice Supreme Court, District of Columbia.

Stipulation.

Filed January 3, 1905.

Supreme Court of the District of Columbia.

Unirep SrTares EX RELATIONE GEORGE A. )

* Lowry and Planters’ Compress Company

Us,

Freperick I, ALLEN, COMMISSIONER OF PAT- | 1) 47953 At Jaw

ents, Edward B. Moore, Assistant Commis- (**°*{~??" “4 U8:

sioner of Patents, S. W. Stocking, J. H. Brick-

enstein, and Thomas G. Steward, board of

examiners in chief in the U. 8S. Patent Office.

In view of the fact that the petition in the above-entitled cause has

been amended and of the fact that a copy of the amended petition

45 has been served upon the respondent F. I. Allen, Commissioner

of Patents, it is stipulated by and between counsel, first, that the

failure to serve a copy of the original petition upon the respondent F. I.

Allen within the time fixed in the order to show cause is waived; sec-

ond, that the answer of said F. I. Allen to the order to show cause shall

be taken to be the same as the answer of the respondent E. B. Moore;

and, third, that the respondents admit the allegations in paragraphs X Ia,

XIb in the amended petition.

A. V. CUSHMAN,

Attorney for Petitioner.

Joun M. Corr,

Attorney for Respondents,

occa oe ee —

22 FREDERICK I. ALLEN VS. THE UNITED STATES.

Order granting writ of mandamus, &e.

Filed January 14, 1905.

Supreme Court of the District of Columbia.

THe Unitrep States or AMERICA EX RELA- )

tione George A. Lowry and Planters’ Com-

press Company

Us.

Freperick I. ALLEN, ComMIssIONER oF \ No. 47053. At law.

Patents, and S. W. Stocking, J. H. Bricken-

stein, and Thomas G. Steward, board of ex-

aminers in chief in the United States Patent

Office.

46 To the honorable Frederick I. Allen, Commissioner of Patents;

Edward B. Moore, Assistant Commissioner of Patents, and S. W,

Stocking, J. H. Brickenstein, and Thomas G. Steward, board of ex-

aminers in chief in the United States Patent Office, greeting:

Whereas one George A. Lowry, assignor to Planters Compress Com-

pany, hath heretofore in the United States Patent Office been made by

the officials of the United States Patent Office a party to an interference

(No. 21,517) declared between a patent (No. 661,475) granted to said

Lowry and an application of one William L. Spoon (Serial No. 74,985);

and whereas the said Lowry in the United States Patent Office did move

to dissolve said interference, in accordance with the law and practice in

such cases made and provided ; and whereas said motion to dissolve said

interference was denied by the primary examiner before whom the motion

was made; and whereas said Lowry did then prosecute an appeal from

the decision of said primary examiner to the board of examiners in chief

in the United States Patent Offiee, under the provisions of sections 482

and 4909 of the Revised Statutes of the United States; and whereas the

said appeal was duly docketed and a day set for hearing before the said

board of examiners in chief in the United States Patent Office; and

whereas pending said appeal Spoon aforesaid moved to dismiss said appeal,

and thereupon, after hearing said motion to dismiss, the said board of

examiners in chief did dismiss said appeal, and said appeal now stands

dismissed ; and whereas said Lowry did thereupon petition the respondent,

Edward B. Moore, Assistant Commissioner of Patents, performing

47 the duties of the office of the Commissioner of Patents as an Acting

Commissioner of Patents, to revise and reverse the said decision

of the board of examiners in chief dismissing said Lowry’s lawful appeal,

‘and to order and direct the said board to entertain said Lowry’s appeal

and hear and determine the merits thereof according to law; and whereas

the said honorable Assistant Commissioner of Patents, after hearing, did

refuse the prayer of said petition; and whereas said Lowry did thereupon

appeal to the respondent, Frederick I. Allen, Commissioner of Patents,

to review, revise, and reverse the said decision of the Assistant Commis-

sioner of Patents and to revise and reverse the said decision of the board

of examiners in chief dismissing said Lowry’s lawful appeal, and to

order and direct the said board to entertain said Lowry’s appeal and to

»~

FREDERICK I. ALLEN VS. THE UNITED STATES. 23

hear and determine the merits thereof according to law; and whereas the

said honorable Commissioner of Patents, after hearing, did refuse the

prayer of said petition; and whereas said Lowry and said Planters

Compress Company did thereafter obtain from this court an order to

show cause, addressed to the respondents aforenamed, why a p’remptory

writ of mandamus should not issue to compel the respondents to perform

their statutory duty to try and determine upon the merits the appeal of

said Lowry to the board of examiners in chief in the United States Patent

Office; and whereas at a late session of this court, held at Washington,

the respondents made return to the said order, setting up that the said

Lowry had no right of appeal under the Statutes of the United States,

and that a lawfully made rule, No, 124 of the Rules of Practice

48 of the United States Patent Office, denied to a party to an inter-

ference the right of appeal from the primary examiner to the board

of examiners in chief in an interference case, and setting up also that the

decision of the primary examiner appealed from was a decision of a ques-

tion interlocutory in the interference and not of an appealable nature

according to the decision of the Court of Appeals in the District of Colum-

bia, in the case of Westinghouse v. Duncan (66 O. G., 1009), and that

in view of all the facts and law above set forth the motion to dismiss

Lowry’s said appeal had been granted and rightfully granted; and

whereas ut the same session of this court, upon consideration of the

returns of the respondents and of the cause severally shown by them

therein against the awarding and issuing of the said writ of mandamus

as prayed for by said Lowry and Planters Compress Company, and upon

consideration of the arguments of counsel as well on behalf of the sev-

eral respondents showing cause as aforesaid as on behalf of said petition-

ers in support of the said rule, it was considered by this court that the

several respondents had certified and returned to this court an insuffi-

cient cause for having dismissed the said appeal and for having refused

to entertain and decide said appeal upon the merits and against the

awarding and issuing of the said mandamus pursuant to the rule to show

cause aforesaid ; and this court, being of this opinion and having deter-

mined and adjudged upon the matter aforesaid that the said appeal was

lawfully taken and that said rule 124, so far as it denies the right of the

petitioner Lowry to appeal from a decision of the primary examiner

to the board of examiners in chief, is null and void, as inconsistent with

law, it is this 14th day of January, 1905, ordered and adjudged:

49 ist. That the petition of the relators praying that a writ of

mandamus issue requiring and commanding you, the said respond-

ent, Frederick I. Allen, Commissioner of Patents, to direct the said

board of examiners ir chief to cause to be reinstated and to reinstate and

take jurisdiction of Lowry’s said appeal and to entertain and consider

the merits thereof and to decide the same upon the merits thereof, be

granted.

2nd. That the rule to show cause be discharged and the petition of the

relators be denied as to the respondents Edward B. Moore, Assistant

Commissioner of Patents, and 8. W. Stocking, G. H. Brickenstein, and

Thomas J. Steward, board of examiners in chief in the United States .

Patent Office.

Harry M. CLapaven,

Chief Justice.

24 FREDERICK I. ALLEN VS. THE UNITED STATES.

The respondent, Frederick I, Allen, Commissioner of Patents, herein

prays an appeal to the Court of Appeals of the District of Columbia from

the judgment of this court granting the petition of the relators, and such

appeal is hereby allowed.

Harry M. CLaBpaven,

Chief Justice,

Approved as to form:

Joun M. Corr,

Attorney for Respondents.

50 Order for transcript of record.

Filed January 20, 1905. In the Supreme Court of the District of

Columbia.

Tue Unirep Srates OF AMERICA, EX RELATIONE|

George A. Lowry and Planters Compress Com-

pany,

Us. ie eae

FREDERICK I. ALLEN, COMMISSIONER OF PAT- _ Ne. ara At

ents; Edward B. Moore, Assistant Commissioner ere

of Patents, and S. W. Stocking, J. H. Bricken-

stein, and T. G. Steward, board of examiners in

chief in the United States Patent Office.

The clerk will please make a transcript in the above-entitled case for

use on appeal, including the following papers:

1. Petition for mandamus and attached exhibits, filed July 7, 1904.

2. Return of respondent Edward B. Moore, filed July 14, 1904.

3. Replication and motion for writ, filed July 26, 1904,

4. Amended petition, filed December 29, 1904. :

5. Stipulation of counsel, filed January 3, 1905.

6. Final order and appeal, filed January 14, 1905.

Joun M. Cort,

Attorney for Respondent,

51 Supreme Court of the District of Columbia.

UNITED STATES OF AMERICA,

District of Columbia, ss:

I, John R. Young, clerk of the Supreme Court of the District of

Columbia, hereby certify the fore-oing pages, numbered from 1 to 50,

inclusive, to be a true and correct transcript of the record, as per direc-

tions of counsel herein filed, copy of which is made part of this transcript,

in cause No. 47053, at law, wherein The United States of America, ex

relatione George A. Lowry and Planters Compress Company, are relators,

and Frederick I. Allen, Commissioner of Patents, et al., are respondents,

as the same remains upon the files and of record in said court.

FREDERICK I. ALLEN VS. THE UNITED STATES. 25

In testimony whereof I hereunto subscribe my name and affix the seal

of said court, at the city of Washington, in said District, this 24th day

of February, A. D. 1905.

[sEAL. | Joun R. YounG, Clerk.

(Endorsed on cover :) District of Columbia Supreme Court. No. 1521.

Frederick I. Allen, Commissioner of Patents, appellant, vs. The United

States of America, ex relatione George A. Lowry et al. Court of Appeals,

District of Columbia. Filed February 24, 1905. Henry W. Hodges,

clerk. '

O

Sitcnaeemnieas ae . a

26 *#REDERICK I. ALLEN VS. THE UNITED STATES,

Wepnespay, April 5th, A. D. 1905.

Freperick I. Antex, Commissioner of Patents, Ap- )

pellant,

v8. » No. 152).

Tue Untrep States or America ec Relatione Grorak

A. Lowry and Planters Compress Company.

The argument in the above entitled cause was conrmenced by Mr,

J. M. Coit, attorney for the appellant, and was continued by Messrs,

Oliver Mitchell and Edmund Wetmore, attorneys for the appellees,

and was concluded by Mr. J. M. Coit, attorney for the appellant.

On motion, both sides are allowed to file supplemental brief

herein if so advised.

pellant,

vs.

Tae Unirep Srares or America ex Relatione Grorae

A. Lowry and Planters Compress Company.

Freperick [. Atten, Commissioner of Patents, Ap- )

L

‘

No. 1521,

Opinion.

(Mr. Justice Durxe delivered the opinion of the court :)

This appeal is taken from a judgment of the supreme court of the

District of Columbia, granting the petition of the relators that a

mandamus issue commanding the Commissioner of Patents to direct

the examiners-in-chief of the Patent Office to reinstate and take

jurisdiction of an appeal taken by Lowry from the ruling of the

primary examiner denying his motion to dissolve an interference

declared by the Patent Office between his unexpired patent and a

pending application for patent filed by one William L. Spoon.

The interference was declared under section 4904 of the Revised

Statutes.

The record discloses that the interference was declared and notice

thereof duly given to the parties as required by law.

In accordance with Patent Office rule 122, which is one of the

rules promulgated by the Commissioner of Patents under the au-

thority conferred upon him by section 483 of the Revised Statutes,

Lowry moved to dissolve the interference upon the various grounds

specified in the rule and that motion was transmitted by the exam-

iner of interferences to the proper principal examiner for a hearing.

The reason urged at the hearing by Lowry for the dissolution was

that Spoon had no right to make the claims in controversy because

his application was for an inoperative device.

The petition sets forth and the answer admits that various pro-

ceedings were had in the interference after Lowry’s motion to dis-

solve was transmitted to the principal examiner and before his final —

refusal to dissolve the interference, which denial led to Lowry’s ap- —

peal to the examiners-in-chief, which was by them dismissed and

FREDERICK I. ALLEN VS. THE UNITED STATES. 27

which is required to be reinstated and heard by the mandamus

granted by the court below.

It is unnecessary to refer to these various proceedings, for no alle-

gation is made that any of them were irregular or that they were

contrary to the statutes and rules governing the conduct of interfer-

ence proceedings, and therefore, they have no legitimate bearing

upon the question raised by the petition for the mandamus.

The facts which raise the question as to the relator’s right to the

mandamus may be briefly summarized. Lowry having been made

a party to an interference, as provided by section 4904, made a mo-

tion for its dissolution in accordance with Patent Office rule 122,

which motion being denied by the principal examiner, who ruled

that Spoon had the right to make the claims, Lowry filed an appeal

to the examiners-in-chief, although Patent Office rule 124 expressly

rovided that no appeal could be taken from a ruling by the exam-

iner that a party to an interference had the right to make the inter-

fering claims. Upon motion duly made Lowry’s appeal was dis-

missed by the examiners-in-chief, and, the Commissioner of Patents

having denied Lowry’s petition for an order directing the examiners-

in-chief to reinstate and determine the appeal, he applied to the

supreme court of the District of Columbia for a writ of mandamus,

which was granted.

The question which it becomes necessary for us to decide is sim-

ply whether the court below erred in issuing the mandamus com-

manding the Commissioner to direct the examiners-in-chief to rein-

state and determine the appeal. It is contended on behalf of the

relators that the rule is contrary to law because it deprives a party

to an interference of the right to an appeal given him by the statute.

If this contention be correct, then the court below rightly granted

the mandamus. If not, its grant was an error and must be reversed.

The paragraph of rule 124 in question provides that from a decis-

ion of the primary examiner, affirming the patentability of the

claim or the applicant’s right to make the same, no appeal can be

taken. No question has or can be raised that the Commissioner of

Patents has the right to regulate the conduct of proceedings in the

Patent Office, including thereunder interference proceedings, by law-

fal rules, provided they are approved by the Secretary of the In-

terior, as the rule in question has been. Sec. 483, U. S. Revised

Statutes.

It was incumbent upon Lowry, in order to entitle him to a writ

of mandamus, to show that he had a clear right of appeal under

the statute relating to appeals in interference cases. Hx parte Cut-

ting, 94 U.S. 14.

The sections of the statute and the rules of the Patent Office, which

are to be considered in disposing of this appeal, are sections 482,

483, 4904, and 4909, and rules 122 and 124. These read as follows:

“Sec. 482. The examiners-in-chief shall be persons of competent

legal knowledge and scientific ability, whose duty it shall be, on the

written petition of the appellant, to revise and determine upon the

validity of the adverse decisions of examiners upon applications for

patents, < for reissues of patents, and in interference cases ; and,

1—311

28 FREDERICK fI. ALLEN VS. THE UNITED STATES.

when required by the Commissioner, they shall hear and report

upon claims for extensions, and perform such other like duties ashe

may assigu them.

“Sec. 483. The Commissioner of Patents, subject to the approval

of the Secretary of the Interior, may from time to time establish reg.

ulations, not inconsistent with law, for the conduct of proceedings

in the Patent Office.

“ Sec. 4904. Whenever an application is made for a patent which,

in the opinion of the Commissioner, would interfere with any pend.

ing application, or with any unexpired patent, he shall give notice

thereof to the applicants, or applicant and patentee, as the case may

be, and shall direct the primary examiner to proceed to determine

the question of priority of invention. And the Commissioner may

issue a patent to the party who is adjudged the prio¢ inventor, unless

the adverse party appeals from the decision of the primary examiner,

or of the board of examiners-in-chief, as the case may be, within

a not less than 20 days, as the Commissioner shall pre.

scrlve.

“Sue. 4909. Every applicant for a patent or for the reissue of 4

patent, any of the claims of which have been twice rejected, and

every party to an interference, may appeal from the decision of the

primary examiner, or of the examiner in charge of interferences in

such case, to the board of examiners-in-chief; having once paid the

fee for such appeal.

“122. Motions to dissolve an interference upon the ground that

no interference 1n fact exists, or that there has been such irregularity

in declaring the same as will preclude a proper determination of the

question of priority, or which deny the patentability of an appli-

eant’s claim, or his right to make the claim, should, if possible, be

made not later than the twentieth day after the statements of the

parties have been received and approved. Such motions, and all

motions of a similar character should be accompanied by a motion

to transmit the same to the primary examiner, and such motion to

transmit should be noticed for hearing upon a day certain before

the examiner of interferences. When in proper form, the motion

presented will be transmitted by the examiner of interferences, with

the files and papers, to the proper primary examiner for his deter-

mination, who will thereupon fix a day certain when the said motion

will be heard before him upon the merits, and give notice thereof

to all the parties. Ifa stay of proceedings be desired, a motion there-

for should accompany the motion for transmission.

“124. Appeal may be taken directly to the Commissioner from

decisions on all motions except the following: (1) On motions to dis-

solve which deny the patentability of applicant’s claim; (2) on

motions to dissolve which deny the right of an applicant to make

the claim; (8) on motions involving the merits of the invention. —

Decisions on these motions, when appealable, go to the examiners in

chief, in the first instance, and upon such appeals the questions shall

be heard inter partes.

“From a decision of the primary examiner affirming the patenta-

FREDERICK I. ALLEN VS. THE UNITED STATES. 29

bility of the claim or the applicant’s right to make the same no

appeal can be taken.” ite

ft will be helpful in determining the question, to consider the his-

tory of the legislation relating to interferences and the rules promul-

ted from time totime by the Commissioner of Patents. Congress, as

early as 1798, recognizing the likelihood of two or more different

arties claiming a prior inventorship of the same invention, and the

necessity of providing for a determination of such question, made

provision therefor, which in some form or other has continued to

this day. ‘The patent act of 1793 provided that in case of interfer-

ing applications, the same should be submitted to three arbitrators,

the decision of a majority of whom should be final as far as related

to the grant of a patent. ‘This provision remained in force until the

patent act of 1836. ‘This act created the Patent Office and inaugu-

rated the present examination system, based on novelty as well as

usefulness. Under the prior acts it may be stated that patents were

granted without examination as to novelty, the only questions being

considered were usefulness, importance, and the form of the papers.

Section 8 of the act of 1836 provided for the determination of ques-

tions of priority of invention between interfering applications and

between such applications and unexpired patents. Here first ap-

pears the provision for bringing unexpired patents into interference

proceedings. Of course the patent could not be recalled or revoked

should the interference result in an award of priority to the appli-

cant. The patentee could then, as now, bid defiance to the Patent

Office. All that could be done was to issue a patent to the applicant,

in which event there would be two outstanding patents for the same

invention. Section 16 of the act provided a remedy forthis, and also

further relief for the applicant should his application for a patent

be denied by the decision of the board of examiners. Such relief

was by bill in equity, which could be filed by either party,

whereupon the court could consider the whole matter de novo, and

declare either or both patents void in whole or in part, or, where one

party was an applicant, could award a patent to him. In other

words, interference proceedings in the Patent Office were not final

under the act of 1836, nor have they since been, for similar provis-

ions are found in the later statutes on the subject and are now set

forth in sections 4915 and 4918 of the Revised Statutes. Under the

act of 1886 the Commissioner was directed to give notice to the

parties, and, if either was dissatisfied with his decision on the

question of priority made after hearing, an appeal could be taken

to a board of three disinterested persons appointed by the

Secretary of State, and the decision of a majority was binding upon

the Commissioner of Patents. By the patent act of 1839 this board

was ubolished and its powers were vested in the chief justice of the

district court of the United States for the District of Columbia. The

act of 1852 extended a like authority to the assistant judges of the

circuit court of said District. The next change in procedure oc-

curred when the patent act of March 2, 1861, went into effect. Sec-

tion 2 of this act provided for the appointment of three examiners-

_ in-chief, whose duty as to appeals in interference proceedings will

30 FREDERICK I. ALLEN VS. THE UNITED STATES.

later be set forth. From their decisions appeals were provided to

the Commissioner of Patents. At this time there was no such officer

as an examiner of interferences and the control of interferences was

in the hands of the various primary examiners. Their decisions jn

both ex parte and interference cases were appealable successively to

the examiners-in-chief, the Commissioner of Patents, and to any one

of the justices of the circuit court. The next change occurred when

the act known as the “ Consolidated patent act,” approved July, 1870,

went into effect. This act provided for the appointment of a special

examiner of interferences to decide the question of priority in the

first instance, and whose decisions were appeaiable successively to

the examiners-in-chief and to the Commissioner, whose decision was

final and so remained until the Court of Appeals of the District of

Columbia was established in 1893. Section 42 of the act of 1870

contains the provision for interferences. The act of 1870 was re.

pealed by the Revised Statutes of 1874, but section 42 of the earlier

act was continued in the same terms as section 4904 of the Revised

Statutes, which provides for the decision of the question of priority.

From the foregoing it is apparent that interferences were insti-

tuted for the purpose of deciding the question of priority of inven.

tion, and for no other purpose, and it logically follows that the

reviews or appeals provided were to be from the decisions awarding

priority by the officer who was authorized to decide the question of

priority in the first instance. For example, the act of 1836 in pro.

viding for appeals expressly says that the appeal is one from the

decision on the question of priority. The act of 1861 providing for

the appointment of examiners-in-chief does not in words ify

what the appeals in interference cases are to embrace, but manifestly

they could only relate to the question of priority, as that was the

only question for the determination of which the interference was

instituted. When they came to pass upon the question of priority

they doubtless might pass upon such matters as were essential to

the correct determination of that question. Neither the statute cre-

ating the board of examiners-in-chief, nor any other, provides for

motions to dissolve an interference for any reason after it was once

declared, and not providing for such motions they do not provide

for any appeals therefrom. In fact, motions to dissolve are not the

creature of any statute, but are the rules of the Patent Office, and

no provision, by Patent Office rules, for such motions were made

until many years after the statutes relating to interferences were en-

acted. Section 42 of the act of 1870, re-enacted in 1874 and now in

force and known as section 4904 of the Revised Statutes, in line with

the earlier statutes, provides for the institution of interferences for

the sole purpose of determining the question of priority of invention,

and the fair intendment of section 4909, which provides for appeals

in interference cases, is that such appeals only go to the question of

ery of invention, for the determination of which they are insti-

tuted.

We can not emphasize too strongly that, in our opinion, the stat-

utes relating to interferences only provide that they shall be insti-

tuted for the sole purpose of determining priority of invention,

pial aa

rs

FREDERICK I. ALLEN VS. THE UNITED STATES. 31

and that it logically follows that appeals in such proceedings, so far

as the statutes go, only provide for appeals from the decisions of

priority. The Commissioner of Patents, under the authority given

to regulate the proceedings in the Patent Office, is clothed with

wer to regulate all interlocutory proceedings in interference cases

y rules not inconsistent with law. If he deems it wise to provide,

aiter the interference has once been declared, for remandiag the in-

terference to the primary examiner for the purpose of an interlocu-

tory hearing and determination of a motion to dissolve it for any

reasop which he considers inay be in the interest of the public or

the parties, we take it that he has full power to do so, and that he

may also provide that such motions may or may not in some or all

respects be reviewed by the appellate tribunals of the Patent Office,

in so doing he is not thereby depriving any party of any statu-

tory right to have all questions passed upon at final hearing, and on

appeals therefrom, which are necessary for a correct determination

of the question of priority, which is the sole question for which in-

terferences are declared. If we find that at the time of the enact-

ment of section 4909 there was no provision either in the statutes or

the rules of the Patent Office for any such proceeding as a motion

to dissolve, we fail to see how it can be assumed that Congress

meant to provide for an appeal from the denial of a motion of so

plainly an interlocutory character. It would be putting a forced

coustruction upon the statute to so hold. If it be assumed that there

is a legal right in a party to an interference, after it is once declared,

to make an interlocutory motion for its dissolution before the final

hearing on the question of priority, irrespective of any statute or

rule, we fail to comprehend upon what principle it can be success-

fully contended that the right of an appeal to a higher tribunal lies,

in the absence of express grant of such an appeal. It is on interloc-

utory matter, and at best brings up only partly and indirectly the

question of priority, and if successive appeals be permitted the re-

sult would be only to add another terror to the many surround-

ing an interference proceeding in the Patent Office. From the

simple and summary mode first adopted for determining the

question of priority of invention that proceeding, by system

of Patent Office rules, has grown to be a veritable old man of

the sea, and the unfortunate inventor who becomes involved

therein is a second Sinbad the sailor. It is known to all who are fa-

miliar with the practice in interference proceedings that by motions,

petitions, and appeals of every conceivable character that the in-

genuity of the skilled attorney can devise, interferences can be and

are prolonged for years, to the injury of the public, and often to

the financial ruin of the parties. It does not appear when the pres-

ent interference was declared, but in view of all the sosuelina

had, as disclosed by the record, it has been a long time and no tes-

a yet been taken. Should we affirm the decision of the

court below, the reasons for which are not set forth, and reverse the

practice of the Patent Office as it has stood unchanged for at least

twenty-five years, we would be placing still another burden of suc-

cessive piecemeal appeals upon the unfortunate interferant in a pro-

32 FREDERICK I. ALLEN VS. THE UNITED STATES.

ceeding which, when decided, is not final, for, as we have shown,

when the defeated party is an applicant he can, if defeated in the

Patent Office, proceed by bill in equity under section 4915 of the

Revised Statutes to obtain a patent, and if one be finally awarded

him he can again try the question of priority with his former sue.

cessful antagonist under section 4918 of the Revised Statutes. Ip

the present case, as we have shown, should a patent be awarded to

Spoon, the question of priority could be at once retried by Lowry,

or by Spoon, under the latter section. We refer to this feature of

the case with full knowledge that the motives of a party in assert.

ing a legal right can not deprive him of it, and without in the re.

motest manner intending to question the good faith of Lowry, but

because the question is so important to the rights of the public and

of inventors, which are best subserved by a speedy grant of lawful

patents to rightful parties, and with the least possible expense. We

should not, however, in the light of what is really accomplished

through an interference, go out of our way, or unduly search for

some plausible ground on which to predicate a finding that Lowry

has a clear right of appeal from an examiner’s decision in an inter.

locutory proceeding. Such rulings, as we have said, are not ap-

— prior to final judgment or decree unless it be so provided

y statute. Eney. of Pl. and Pr., vol. 2, page 81.

We have stated in general terms that we find nothing in the

statutes permitting an appeal in such interlocutory motions, but be-

fore referring more particularly to the statutes in question it will be

well to examine the history of interlocutory motions to dissolve in-

terferences, provision for which has from time to time been made

by the rules of the Patent Office. The first provision in the rules

relating to their dissolution because improperly declared is found

in rule 58 of August 1, 1869, eight years after the creation of the

board of examiners-in-chief. This rule says:

“58. Cases of interferences will, when the issue is made up and

the testimony taken, be tried before an examiner specially detailed

for that purpose. If an interference has been properly declared, it

will not be dissolved without judgment of priority, founded upon

the testimony or the written concession of one of the parties.”

It will be seen that this does not, except by interference, provide

for a dissolution of an interference, and no ground is stated upon

which a motion may be based, save the general one that it has been

improperly declared, and no provision of any kind is made for an

appeal from any order made after the decision of the motion.

The act of 1870 having provided for an examiner of interfer-

ences, provision was made in rule 59, of July 15, 1870, for their trial

before such officer. Its full provisions are as follows :

“59. Cases of interference will, when the issue is made up and

the testimony taken, be tried before the examiner in charge of in-

terferences. If an interference has been properly declared, it will

not be dissolved without judgment of priority, founded upon the

testimony or the written concessiun of one of the parties, unless the

invention is found not ‘o be patentable, or to have been abandoned,

‘slots vr cide

So i

ia bd be sad oo

FREDERICK I. ALLEN VS, THR UNITED STATRS. 33

or that it has been in public use for more than two years prior to

the application of either party, or that no interference in fact exists.”

The last paragraph of this rule, as amended in 1871, contains the

first express provision for an interlocutory motion for dissolution of

an interference. It says:

«A motion for a dissolution of an interference on the ground that

it was improperly declared, if made before the taking of testimony,

will be heard by the primary examiner who declared the interfer-

nee.”

; On September 1, 1873, the following clause was added to the rule:

“Upon such hearing the primary examiner will recommend ihe

granting or refusal of such motion, and the examiner in charge of

interferences will order accordingly.”

The rule was changed April 1, 1875, so as to read as follows:

“59. An interference will not be declared until the subject-matter

involved is decided to be patentable. If after being declared it is

found that no interference in fact exists, or that there has been such

irregularity in declaring the same as will preclude the proper deter-

mination of the question of right between the parties, it will be dis-

solved, and an appeal may be taken to the Commissioner in person.”

It will be seon that here first is nade any provision for an appeal

from the decision of the interlocutory proceeding and such appeal

was allowed to the Commissioner in person,

November 1, 1876, the phraseology of this rule was changed in

matters not material to the question under consideration and the

following clause added to it: “ But if the examiner should decide

that the subject-matter is not patentable in view of the state of the

art the interference will be dissolved and the matter decided upon

can be proceeded with ex parte.” Without material modification

this rule remained in force until the general revision of rules of

December 1, 1879, when the following rules relating to dissolution

were adopted :

“116. Motions to dissolve an interference which deny the patent-

ability of an applicant’s claim, or his right to make the claim, will

be submitted to the examiner of interferences before the day fixed

for filing the statements provided fez in rules 97, 101, and 102, and

will be transmitted by him, with che files and papers, to the primary

examiner, who will take jurisciction of the case for the determina-

tion of such motions, and will return the files and papers to the ex-

aminer of interferences, with his decision, at the expiration of the

time limited for appeal, if no appeal shall have been taken, or sooner

if the party entitled to appeal shall file a waiver in writing of his

right of appeal ; and such decision will be binding on the examiner

of interferences unless revised or modified on appea: From a de-

cision of the primary examiner on such motion, denying the patent-

ability of a claim or the right of an applicant to make it, an appeal

may be taken ex parte to the examiners-in-chief; but from his de-

cision affirming its patentability or the applicant’s right no appeal

can be taken.

“117. Motions to dissolve an interference upon the ground that

no interference in fact exists, or that there has been such irregu-

84 FREDERICK I. ALLEN VS. THE UNITED STATES.

larity in declaring the same as will preclude the proper determina.

tion of the question of priority between the parties, and all other

lawful motions exceptithose mentionedt in rule 116, will be made

before the tribunal having jurisdiction at the time. * * *

“118. Appeal may be taken directly to the Commissioner from

decisions on all motions, except motions to dissolve interferences

denying the patentability of applicant’s claims or their right to make

the claims, and other lawful motions involving the merits of the

case, which, when appealable, may be appealed to the board of ex-

aminers-in-chief (see rules 116, 141).”

Here first appears provision for an interlocutory motion to dis-

solve an interference upon the ground that a party to it has not the

right to make the interfering claim, which was the ground urged

by Lowry upon the hearing of his motion. The provisions for ap-

peals are found in rules 116 and 118, which provide an appeal to

the examiners-in-chief from (among other decisions) one denying

the right of an applicant to make the interfering claim. No pro-

vision is made for an appeal from a decision affirming his right to

make the interfering claim. September 15, 1880, the following

clause was added to rule 118, and it has been ever since in force.

It reads, “ from a decision affirming the patentability of the claim,

or the applicant’s right to make the same, no appeal can be taken.”

This clause simply makes clear and positive the then well-settled

rule of the office that no appeal was permitted in any proceeding

where the examiner held that a claim was patentable to the party

making it. The Commissioner, however, was of course not debarred

from exercising his supervisory power and for lawful reasous re-

versing the holding of the examiner and refusing to allow the claim.

From that time on changes have been made in the rules relating to

the conduct of interferences until the rules have the phraseology

shown in present rules 122 and 124. It will be seen that at no time

has an appeal been provided from a decision rendered on bearing

an interlocutory motion for a dissolution of an interference affirm-

ing the right of a party to make the interfering claim.

It is urged on behalf of appellees that rule 55 of July 15, 1870,

and rule 55 of 1871 (the latter when read in the light of rule 48

of the same date), provided for appeals to the examiners-in-chief

from decisions on interlocutory motions for the dissolution of inter-

ferences. ‘These rules are as follows:

“ 55. In cases of interference, parties have the same remedy by

appeal as other applicants, to the examiners-in-chief and to the

Commissioner, but no appeal lies in such cases from the decision of

the Commissioner. Appeals in interference cases should be accom-

panied by a brief statement of the reasons thereof.

“55. In cases of interference appeals may be taken to the ex-

aminers-in-chief and to the Commissioner in the manner provided

in rule 48.

“ 48. In cases of interference parties have the same remedy by ap-

peal to the examiners-in-chief and to the Commissioner, as in ex parte

cases, but no appeal lies in such cases from the decision of the Com-

missoner.” * *. *

NLL ERLE BE EP ELEIG APL LES GAL EIT iE ELLIE LINE ASLO LEG RET EY CS OT OL ————

S : PO Neate hy ene

FREDERICK I. ALLEN V8. THE UNITED STATES.

We do not so read them, because at the time of their promulga-

tion there were in force no rules providing for such motions, and,

secondly, because the statute of 1870 relating to ap als provides

that the appeals in interference were only from final decisions

awarding priority.

| Nor, as we have said, can authority for appeals in such matters to

the examiners-in-chief be predicated upon the clause of rule 59 of

1875. The 1877 rule 59 is, in respect to appeals, very similar to

that of 1875, but counsel for appellees seem to have overlooked that

rule and considered rule 59 of 1877 as a new rule. They have not

quite correctly quoted rule 59 of 1877. But both rules give the

right of appeal, not to the examiners-in-chief, but to the Commis-

sioner, and it will be remembered that at this date no provision

was made in the rules for interlocutory motions to dissolve interfer-

ences on the ground that a party to it had not the right to make the

interfering claim.

While we recognize the rule, as laid down in Houghton v. Payne,

194 U. S. 88, and in other decisions of the Supreme Court, that if a

ractice is contrary to law it is not made lawful by the practice of a

epartment for a long period of time, yet due regard should be + iven

to a practice which admittedly has prevailed for more than twenty-

five years in proceedings of a judicial character, even should there

be a reasonable doubt in the mind of the court as to the proper

construction to be placed upon a statute. ‘The Supreme Court said

in Bate Refrigerating Co. v. Sulzberger, 157 U.S. 1:

«x * * Tf the statute be not so explicit as to preclude con-

struction ; if upon applying to it the established rules of interpreta-

tion; if looking at it in the light of previous legislation on the

subject, if there be reasonable ground for adopting one of two con-

structions ; this court, without departing from sound principle, may

well adopt that construction which is in harmony with the settled

practice of the executive branch of the Government.”

With such light as is afforded from a consideration of prior

statutes and the rules made by the Commissioner of Patents under

statutory authority, we will more fully consider section 4809, which

is the same as section 46 of the act of July 8, 1870. Provision was

first made for a board of examiners-in-chief by section 2 of the act

of March 2, 1861. ‘That section provided that the duty of the board

was “ on the written petition of the applicant for that purpose being

filed, to revise and determine upon the validity of decisions made

by examiners when adverse to the grant of letters patent and also

to revise and determine in like manner upon the validity of the

decisions of examiners in interference cases,” etc. Manifestly, the

appellate power to revise the decision of examiners in interference

cases referred to such decisions as examiners then had the power to

make in such proceedings, and we are not referred to any statute or

Patent Office rule, nor have we been able to discover any such statute

or rule, which gave to the examiners any question for them to de-

cide but that of priority. There was at that time no statutory

authority lodged in examiners to decide interference cases, but as

the ee “g the Patent Office increased it became necessary for

yale St ag sar ae. Ly oes eae neg.

PBs a Ne TS GEL LET SET NOON RET PY HO LN AN OES RET ES PRIE ED BS IAT

.

SHANI UE TIA SOIREE

36 FREDERICK I. ALLEN VS. THE UNITED STATES,

the Commissioner of Patents to delegate more and more of his duties

to his assistants, but no statutory authority is shown to have been

given to the Commissioner at this time to decide more than the

question of priority of invention. Undoubtedly it was within his

power and his duty in deciding that question to examine and decide

all ancillary matters necessary to the correct determination of the

main question, and when he delegated his authority in interference

cases, so far as he could, to his assistants, it is fair to presume that

such ancillary questions, if necessary to the decision of the question

of priority, could be examined and decided by them. But it by no

means follows that such ancillary questions were to be decided by

him, or them, in advance of the decision of the main question—

that of priority. Therefore we conclude that when an appeal was

given to the examiners-in-chief to review the decisions of examiners

in interference cases, Congress had not in mind to confer power of

review upon them except as to the question of priority, and such ap-

cillary questions as the examiners had passed upon when deciding

the question of priority for which the interference was instituted,

When section 46 of the act of 1870 was written there had been ere.

ated an examiner of interferences, who took the place of the exam-

iners in deciding the only question for which an interference is

instituted. Therefore we find provision made for appeals from his

decisions, and this was carried forward in section 4909 of the revision,

For convenience, we again set forth this section:

“Sec. 4909. Every applicant for a patent or for the reissue of a

patent, any of the claims of which have been twice rejected, and

every party to «n interference, may appeal from the decision of the

primary examiner, or of the examiner in charge of interferences in

such case, to the board of examiners-in-chief, having once paid the

fee for such appeal.”

In the light of the previous statuies we think that the proper

construction to be placed on this section is as though it read, every

applicant for a patent or for the reissue of a patent, any of the

claims of which have been twice rejected, may appeal from the de-

cision of the primary examiner, and every party to an interference

may appeal from the decision of the examiner in charge of inter.

ferences in such case, to the board of examiners-in-chief. In other

words, to abbreviate and muke the section more suecinct the words

“may appeal from the decision ” were used but once, but we think

that thereby clearness was sacrificed for brevity. We are also of the

opinion that the decisions relating to interferences, referred to in

sections 482, 4904, and 4909 of the Revised Statutes, from which ap-

peals are allowed to the examiners-in-chief and from them to the

Commissioner of Patents, are final decisions and are not such as are

made in interlocutory matters which do not of themselves preclude

and prevent a decision of the question of priority, which is, as we

have said, the purpose for which interferences are instituted.

The act of 1893 which created this court provides that “any party

aggrieved by a decision of the Commissioner of Patents in any in-

terference case may appeal therefrom to said Court of Appeals.”

We have construed tbat clause to refer only to final decisions by the

FREDERICK I. ALLEN VS. THE UNITED STATES. 87

Commissioner in interference cases, and have refused to take juris-

diction and decide interlocutory questions sought to be brought be-

fore us on appeal in advance of an appeal taken in such cases to

review a final decision awarding priority of invention. As we said

in Westinghouse v. Duncan, 2 App. D. C. 131, in referring to appeals

allowed by the statute, “the terms of the statute should receive a

reasonable interpretation and be so construed as to avoid multiply -

ing litigation or producing unnecessary delay and expense to the

rties concerned, and to prevent, as far as possible, embarrassment

and hindrance to the proceedings in the Patent Office.” We think

this reasoning applies equally to.appeals in the Patent Office in in-

terlocutory proceedings iu interferences. There should be some

limit on appeals, for where three millions of dollars have been in-

vested, as stated in this case, by the party holding the patent, there

is every incentive to prolong the proceedings until the expiration of

the patent, and if then the applicant is successful it means a second

patent for 17 years, and the public, instead of paying tribute for 17

years, will have had a patent monopoly existing for twice that pe-

riod, or for a goodly portion of it.

The power to decide the question of priority, which is the sole

question for which interferences were provided, as shown by a read-

ing of every statute on the subject enacted from 1793 down to the

present time, having been transferred from the examiners generally

to the particular examiner designated as the examiner of interfer-

ences, it became necessary to transfer this right of appeal in inter-

ferences from the decisions of such examiners to the examiuer of

interferences. It was not, as an examination of the rules of the

Patent Office has shown, until 1871 that any provision was made

for the dissolution of an interference before testimony had been

taken and before a decision on the question ef priority was in order.

Whether in the light of experience it has proven to have been in

the interest of interferants and of the public, to provide the elabo-

rate system of preliminary or interlocutory motions to dissolve in-

terferences, which has been the outgrowth of the power lodged in

the Commissioner under section 483, is perhaps a debatable question.

However that may be, we think it clearly within his power in making

provision for these interlocutory motions to limit the right of appeal

where, as in the present case, the examiner has held that the applicant

had the right to make the ciaims of the interference. Whatever right

the relators may have to the judgment of the appellate tribunals of

the Patent Office and of this court upon the question of an absence of

right in Spoon to make the interfering claims because his device is

inoperative, we think that right is not through an appeal from the

refusal of the examiner to dissolve an interference upon the hearing

of an interlocutory motion made for that purpose, where no right of

appeal is granted by the rule under which the motion ismade. We

take it that the Commissioner could abrogate both rules 122 and 124

without depriving parties to an interference of any statutory right.

If he has the right to make rules for interlocutory motions, he cer-

tainly has the right to repeal them.

The right of a party to make the claim of an interference is not

38 FREDERICK I. ALLEN VS. THE UNITED STATES.

finally determined by the decision of the examiner on a motion for

a dissolution. This is clearly shown by rule 126 of the Patent

Office under which the examiner of interferences or the examiners.

in-chief before or on deciding the question of priority are authorized

to call the attention of the Commissioner to the fact that no inter.

ference exists, or that there is a statutory bar to the grantof g

patent, etc., whereupon the interference may be remanded to the

rimary examiner for examination and decision. Appeals are al-

owed from his decision as in other cases. It is not necessary in thig

proceeding to construe this rule or to pass upon the question whether

the lack of a right of party to an interference to make a claim by

reason of the inoperativeness of the invention disclosed in his appli.

cation, does or does not relate to the question of priority as referred

to in said rule. However this may be, it would seem that it might

in many cases be quite difficult to decide the question of priority

where the evidence showed that the device disclosed in the applica.

tion was not operative. It will be time, however, to decide that

question when it is presented in a case where we are called upon

to decide the question of priority. We have, however, reviewed

other ancillary questions when they have properly come before us

on appeals from final judgments awarding priority of invention,

Stevens v. Seher, 11 App. D. C. 245. Wehave declined to entertain

appeals from decisions of the Patent Office that were not final de

cisions.

We are clearly of the opinion that the court below erred in grant-

ing the petition for the writ of mandamus. Our reasons, summa-

rized, are these: That a motion to dissolve an interference before

the final hearing of the question of priority, and before the case is

ready for such hearing, is an interlocutory proceeding and is not

appealable unless made so by statute or rule of court; that no stat

ute, and, more specifically stated, neither sections 482, 4904, or 4909

of the Revised Statutes, nor any rule of the Patent Office made by

the Commissioner, gives the right of appeal to the examiners-in-

chief from decisions made by the principal examiners on the heat-

ing of a motion to dissolve, holding that a party has the right to

make the claim which is the issue of an interference; that where

the statute gives the right of appeal in interferences from decisions

of any officer of original jurisdiction it means final decisions; that

the right to such an appeal should be clear, and that if there is any

doubt, although we believe there be none, as to the construction of

the statutes claimed to confer the right, such doubt should be re-

solved in favor of the long established and acquiesced-in practice of

the Patent Office, which we believe is in the interest of interferants;

that the provision for interlocutory motions to dissolve interferences

is the creature of arule and not founded on statutory enactment |

and that a party to an interference is not deprived of any statutory

right toan appeal by reason of the rules not providing for an appeal

from a decision of the examiner that a party has a right to make

the interfering claim; that whatever right a party to an interfer-

ence has to contest the right of his adversary to make the epee

claim, such right if denied is reviewable, if at all, upon the fina

Povey ee: OF BAO ESS AIELE EI CES PBT % Es e m) pi ore

FREDERICK I. ALLEN VS. THE UNITED STATES. 39

decision of the question of priority, and such right of appeal as he

has to have that question decided is to be considered on the hearing

of the statutory appeals allowed from the decision of the question

of priority by the examiner of interferences.

he relators not having shown that they have a clear right of

appeal which has been denied are not entitled to the writ of man-

damus and therefore the court below erred in granting the order of

January 14, 1905, awarding a writ of mandamus directing the Com-

missioner of Patents to direct the exuminers-in-chief to reinstate and

take jurisdiction of Lowry’s appeal and to entertain and consider

the merits thereof and to decide the same upon the merits. It fol-

lows that the order granting the writ of mandamus should be re-

yersed, with costs, with directions to discharge the rule to show cause

and to dismiss the petition. It is so ordered.

Reversed.

Wepnespay, May 24th, A. D. 1905.

Faeperick I. ALLEN, Commissioner

of Patents, Appellant,

ge@ Unitep Stares OF AMERICA

sa >No. 1521, April Term, 1905.

ez Relatéone George A. Lowry and |

Planers Compress Company.

Appeal from the Supreme Court of the District of Columbia.

This cause came on to be heard on the transcript of the record

from the supreme court of the District of Columbia, and was argued

by counsel, On consideration whereof, it is now here ordered and

adjudged by this court that the order of the said supreme court, in

this cause, be, and the same is hereby, reversed with costs; and that

this cause be and the same is hereby remanded to the said supreme

court with directions to distharge the rule to show cause and to dis-

miss the petition.

Per Mr. Justice DUELL.

May 23, 1905.

Tugspay, June 6th, A. D. 1905.

Freperick I. ALLEN, Commissioner of Patents, Ap-

pellant,

vs. No. 1521.

Tar Unirep States or America ex Relatione GEORGE

A. Lowry and Planters Compress Company. :

On motion of Mr. A. V. Cushman, of counsel for the appellees, it

is ordered by the court that a writ of error to remove this cause to

the Supreme Court of the United States issue, and the bond for costs

is fixed at the sui of $300.

40 FREDERICK I. ALLKN VS. THE UNITED STATES.

Frevericx [. Attex, Commissioner of Patents, Ap- )

pellant,

v8. » No. 152}.

Tne Unirep States or America ex Relatione Geonas |

A. Lowry and Planters Compress Company.

It is ordered by the court that the mandate in the above entitied

cause be stayed until further order of the court.

Unirep States or AMERICA, 88:

The President of the United States to the lionorable the justices

of the Court of Appeals of the District of Columbia, Greeting:

Because in the record and proceedings, as also in the rendition of

the judgment of a plea which isin the said Court of Appeals before

you, or some of you, between Frederick I. Allen, Commissioner of Pat.

ents, appellant, and The United States of America ex relation,

George A. Lowry and Planters Compress Company, appellees,

a manifest error hath happened, to the great damage of the §

said appellees as by their complaint appears. We being willin

that error, ifany hath been, should be duly corrected, and full al

speedy justice done tothe parties aforesaid in this behalf, do com.

mand you, if judgment be therein given, that then, under your seal,

distinctly and openly, you send the record and proceedings afore.

said, with all things concerning the same, to the Supreme Court of

the United States, together with this writ, so that you have the

sane in the said Supreme Court at Washington, within 30 days

from the date hereof, that the record and proceedings aforesaid

being inspected, the said Supreme Court may cause further to be

done therein to correct that error, what of right, and according to

the laws and customs of the United States should be done.

Witness the Honorable Melville W. Fuller, Chief Justice of the

United States, the 6th day of June, in the year of our Lord one

thousand nine hundred and five.

{Seal Court of Appeals, District of Columbia. }

HENRY W. HODGES,

Clerk of the Court of Appeals of the District of Columbia.

Allowed by—

Bond on Writ of Error.

Know all men by these presents, that we, George A. Lowry, and

Planters Compress Company, as principals, and American Bounding

Company of Baltimore, as surety, are held and firmly bound unto

Frederick I. Allen, Commissioner of Patents, in the full and just sum

of three hundred dollars ($300.) to be paid to the said Frederick 1.

Allen, Commissioner of Patents, his certain attorney, executors,

EP YL LLL I” SOE FOE OLIN Fe HET CA

FREDERICK I. ALLEN VS. THR UNITED STATRS. 41

administrators, or assigns ; to which payment, well and truly to be

made, we bind ourselves, our heirs, executors, and administrators,

jointly and severally, by these presents.

Sealed with our seals and dated this 13th day of June, in the year

of our Lord one thousand nine hundred and five.

Whereas, lately at a Court of Appeals of the District of Columbia,

in a suit depending in said court, between United States ex relatione

George A. Lowry and Planters Compress Company vs. Frederick I.

Allen, Commissioner of Patents a judgment was rendered against

the said George A. Lowry and Planters Compress Company, and the

said George A. Lowry, and Planters Compress Company having ob-

tained a writ of error and filed a copy thereof in the clerk’s office of

the said court to reverse the judgment in the aforesaid suit, and a

citation directed to the said Frederick I. Allen, Commissioner of

Patents citing and sdmonishing him to be and appear at a Supreme

Court of the United States, to be holden at Washington, within

thirty days from the date thereof:

Now, the condition of the above obligation is such, that if the said

George A. Lowry and Planters Compress Company shall prosecute

said writ of error to effect, and answer all damages and costs if they

fail to make their plea good, then the above obligation to be void ;

else to remain in full force and virtue.

PLANTERS COMPRESS COMPANY,

By FREDERIC 8. GOODWIN, Secretary.

[Seal of Planters Compress Company. }

AMERICAN BONDING COMPANY

OF BALTIMORE,

By THOS. J. DE LASHMOTT,

Attorney in Fact.

[Seal of American Bonding Company of Baltimore. }

Sealed and delivered in the presence of—

Approved—

JOHN M. COIT,

Counsel for Com’r Pats.

Approved by—

SETH SHEPARD,

Chief Justice Court of Appeals

of the District of Columbia.

[Endorsed ‘| No.1521. Frederick I. Allen, Commissioner of Patents,

appellant, vs. The United States of America ez relatione, George A.

Lowry and Planters Compress Company. Bond on writ of error to

Supreme Court U.S. Court of Appeals, District of Columbia. Filed

June 14, 1905. Henry W. Hodges, clerk.

42 FREDERICK f. ALLEN VS. THE UNITED STATES.

Unrrep States or AMERICA, 88:

Te Frederick I. Allen, Commissioner of Patents, Greeting :

You are hereby cited and admonished to be and appear at,

Supreme Court of the United States, at Washington, within 30 days

from the date hereof, pursuant to a writ of error filed in the clerk's

office of the Court of Appeals of the District of Columbia, whergig.

The United States of America ex relatione, George A. Lowry ang

Planters Compress Company are plaintiffs in error, and you are de

fendant iu error, to show cause, if any there be, why the judg

rendered against the said plaintiffs in error as in the said writ

error mentioned, should not be corrected, and why speedy j

should not be done to the parties in that behalf.

Witness, the Honorable Seth Shepard, Chief Justice of the

of Appeals of the District of Columbia, this 14th day of June, in

year of our Lord one thousand nine hundred and five. r

SETH SHEPARD,

Chief Justice of the Court of Appeals of the ;

District of Columbia,

Service accepted Juno 14, 1905. \

JOHN M. COIT,

Counsel for Defendant in Error, —

[ Endorsed :] Court of Appeals, District of Columbia, Filed Jun

14 1905 Henry W. Hodges, clerk.

Court of Appeals of the District of Columbia.

I, Henry W. Hodges, clerk of the Court of Appeals of the District

of Columbia, do hereby certify that the foregoing printed and type.

written pages numbered from 1 to 38, inclusive, contain a true }

of the transcript of record and proceedings of said Court of Ap ‘

in the case of Frederick I. Allen, Commissioner of Patents, appek

lant, vs. The United States of America ex relatione George A. Lo

and Planters Compress Company, No. 1521, April term, 1905, as the

same remain upon the files and records of said Court of Appeals.

In testimony whereof I hereunto sub

Seal Court of Appeals, scribe my name and affix the seal of said

District of Columbia. Court of Appeals, at the city of Washing: |

ton, this 16th day of June, A. D. 1905. —

HENRY W. HODGES,

Clerk of the Court of Appeals of the District of Columbia.

Endorsed on cover: File No. 19,813. District of Columbia Court

of Appeals. Term No. 311. The United States ez rel. George A.

Lowry and Planters Compress Company, plaintiffs in error,

Frederick I. Allen, Commissioner of Patents. Filed June 23d,

1905. File No. 19,813.

FILE COPY.

Oe” ee - — oe on"

Supreme Court of the United States

FILED

OCT 10 1906

Docket No. 56.

ree. ita JANG DL Nok WTR,

TILE. UNITED STATES ex. Relatione GEORGE A.

LOWRY and PLANTERS COMPRESS COMPANY.

Plaintiffs in Error.

Va.

FREDERICK L ALLEN, Commissioner of Patents.

Defendant in Error.

In Error to the Court of Appeals of the

District of Columbia.

BRIEF FOR THE PLAINTIFFS IN ERROR.

Oliver Mitchell,

Edmund Wetmore,

Of Counsel.

Printed by Library Bureau, Keston

Supreme Court of the United States

OCTOBER TERM, 1906.

—————

Docket No. 56.

a

THE UNITED STATES ex Relatione GEORGE A.

LOWRY and PLANTERS COMPRESS COMPANY

Plaintiffs in Error.

vs.

FREDERICK IL. ALLEN, Commissioner of Patents.

In Error to the Court of Appeals of the District of

Columbia.

BRIEF FOR THE PLAINTIFFS IN ERROR.

The Case Stated.

This case comes to this court upon writ of error to

the Court of Appeals of the District of Columbia.

The Petition (Record, p. 2) shows that this case

arises out of an interference in the United States Pat-

ent Office between an application of William L. Spoon

for a patent for a Cotton Bale, filed Sept. 10, 1901, and

the Letters Patent of George A. Lowry (assignor to

the Planters Compress Company) for a Cotton Bale,

dated Nov. 6, 1900, and filed Jan. 29, 1897.

The Lowry-Spoon interference was declared in the

United States Patent Office at the request of Spoon

ee ae

2

and the petitioner Lowry was, by the authorities of

the Patent Office, made a party to the interference.

Lowry moved to dissolve the interference upon the

several grounds mentioned in Rule 122 of the Rules

of Practice in the Patent Office (Record, p. 2; IV; p

12, 4), which are as follows:—*

(a) That no interference in fact exists;

(b) That there has been such irregularity in de-

claring the same as will preclude a proper determina-

tion of the question of priority;

(c) That the applicant’s claim is unpatentable:

(d) That the applicant has no right to make the

claim.

*“122. Motions to dissolve an interference upon the ground

that no interference in fact exists, or that there has been such

irregularity in declaring the same as will preclude a proper

determination of the question of priority, or which deny the

patentability of an applicant's claim, or his right to make the

claim, should, if possible, be made not later than the twentieth

day after the statements of the parties have been received and

approved Such motions, and all motions of a similar, character.

should be accompanied by a motion to transmit the same to the

Primary Examiner, and such motion to transmit should pe

noticed for hearing upon a day certain before the Examiner of

Interferences. When in proper form the motion presented wil!

be transmitted by the Examiner of Interferences, with the files

and papers, to the proper Primary Examiner for his determina-

tion, who wil! thereupon fix a day certain when the said motion

will be heard before him upon the merits, and give notice thereof

to all the parties. If a stay of proceedings be desired, a motion

therefor should accompany the motion for transmission

When the motion has been decided by the Primary Examiner,

‘ if no appeal has been taken therefrom, at the expiration of the

time limited for appeal the Examiner will return the files and

papers, with his decision, to the Examiner of Interferences.

Such decision will be binding on the Examiner of Interferences

unless reversed or modified on appeal. (Rule 124.)”

RAREST ALIEN PEPE DOE PE ARLE SORE LL ee Sea Cabiariss i ——

Upon the hearing of the Motion to Dissolve, the

Motion to Dissolve was allowed by Primary Examiner

Macauley and thereupon the applicant Spoon appealed

to t.e Board of Examiners-in-Chief, who affirmed the

decision of the Primary Examiner dissolving the in-

terefence, from which affirmance, Spoon appealed to

the Commissioner of Patents in person (Record, p.

2. 1V; p. 12, 4), and pending this appeal petitioned the

Commissioner to remand the interference to the Pri-

mary Examiner to consider the question of operative-

ness of the Spoon press to make the issue bale and to

receive affidavits in support of Spoon’s contention

as to operativeness. The petition was granted and

after a hearing by Acting Examiner Ruckman, the

Acting Examiner decided that the Motion to Dissolve

should not be allowed. Lowry then appealed to the

Board of Examiners-in-Chief, his appeal fee was ac-

cepted by the Patent Office and his appeal was dock-

eted by the Board and a day set for the hearing, and,

before the hearing, Spoon moved to dismiss the appeal

of Lowry and upon hearing, Spoon’s motion to dis-

miss the appeal was allowed, upon the ground that

the appeal was forbidden by Rule 124 of the Rules of

Practice of the Patent Office (Record, p. 9).

Rule 124 is as follows (Record, p. 6):

‘‘Appeal may be taken directly to the Com-

missioner from decisions of the Primary Examiner

on all motions except the following: (1) On

motions to dissolve which deny the patentability

of applicant’s claim; (2) On motions to dissolve

which deny the right of an applicant to make the

elaim; (3) ‘On motions involving the merits of the

invention. Decisions on these motions, when ap-

pealable, go to the Examiners-in-Chief, in the first

instance, and upon such appeals, the question shall

be heard inter partes.

PIG 8 sop SH TE ER GT TRIS MRO FAILS EERIE PEED POLE IER

way

4

From a decision of the Primary Examiner af-

firming the patentability of the claim or the ap-

plicant’s right to make the same no appeal cai be

taken.”’

In order to exhaust his remedies in the Patent Of-

fice, Lowry thereupon appealed to the Commissioner

of Patents to direct the Board of Examiners-in-hief

to entertain and decide his appeal. After hearing

before Mr. Assistant Commissioner Moore, this was

denied (Record, p. 10). Lowry then brought the mat-

ter to the attention of the Commissioner in person

and filed a brief in support thereof. December 6, 1904,

the Commissioner denied the appeal (Record, p. 19).

Thereupon Lowry and the Planters Compress Com-

pany filed their petition in the Supreme Court of the

District of Columbia for a writ of madamus (Record,

p- 1). After hearing that Court, January 1, 1904, or-

dered that the writ issue against the Hon. Commission-

er, as prayed (Record, p. 22). The Commissioner then

appealed to the Court of Appeals of the District of

Columbia and upon this appeal the order of the Su-

preme Court of the District of Columbia was reversed.

From that decision the plaintiffs in error prosecute

this writ of error.

The validity of Rule 124 of the Rules of practice in

the United States patent Office and the action of the

officials of the Patent Office under the alleged author-

itv of that rule is challenged by the relator, and the

case is therefore one ‘‘in which is drawn in question”’

directly, an ‘‘authority exercised under the United

States,”’ and the ‘‘validitv’’ of such authority. 27

Stat. 436.

Steinmetz v. Allen, 192 U. S. 565.

Houghton v. Pavne, 194, U.S. 88.

ia PPP had om

5

he following errors are assigned:

First. The Court erred in reversing the judgment

of the Supreme Court of the District of Columbia

granting the relator’s petition for a writ of mandamus.

Second. The Court erred in not affirming the judg-

ment of the Supreme Court of the District of Columbia

sustaining the relator’s petition for a writ of manda-

mus notwithstanding the defendant’s return.

Third. The Court erred in holding that the sole

question authorized to be decided in interference pro-

ceedings is the question of priority of invention.

Fourth. The Court erred in holding that the sole

question for adjudication in an interference proceeding

between applicant and patentee is the question of

priority of invention and in not holding that all mat-

ters going to the applicant’s right to a patent, properly

raised in an interference proceeding must be adjudi-

eated.

Fifth. The Court erred in not holding that in the

absence of any Rule of Practice established by the

Commissioner of Patents regulating the time for tak-

ing or hearing such appeal, a decision of a motion to

dissolve the interference on the ground that no inter-

ference in fact exists, and on the ground that there

has been such irregularity in declaring the same as

will preclude a proper determination of a question of

priority, and on the ground that the applicant’s claim

is unpatentable, and on the ground that the applicant

has no right to make the claim, is immediately appeal-

able under Sec. 4909 of the Revised Statutes of the

United States.

6

Sixth. The Court erred in not holding that Lowry

had a Statutory right of appeal to the Board of Ex-

aminers-in-Chief from the decision of the Primary

Examiner complained of, under Sec. 4909 of the re-

vised Statutes of the United States.

Seventh. The Court erred in not holding that the

Board of Examiners-in-Chief had jurisdiction under

Sec. 482 of the Revised Statutes of the United States

to entertain the relator’s appeal and a statutory duty

to do so, notwithstanding Rule 124 of the Rules of

Practice in the Patent Office.

Eighth. The Court erred in not holding Rule 124

of the Rules of Practice in the United States Patent

Office invalid as inconsistent with law and in not

holding that, under Sec. 4909, R. S. U. S., Lowry had

a right of appeal notwithstanding Rule 124.

Ninth. The Court erred in not holding Rule 124 of

the Rules of Practice in the United States Patent

Office, void as inconsistent with Sec. 4909 R. 8S. U.S.,

and in not holding that the making of Rule 124 of the

Rules of Practice in the United States Patent Office,

was not a valid exercise of an authority under the

United States.

Tenth. The Court erred in treating Sec. 4909 of the

Revised Statutes of the United States as so ambiguous

as to warrant the application of extrinsic evidence of

the intention of Congress in enacting the same.

The plaintiff in error prays that the judgment of

said Court be reversed.

THE ISSUE RAISED.

The question raised upon this proceeding is,

whether, upon the facts of record, which are admitted

7

by the return (Record, p. 12) to be true, the Commis-

sioner of Patents should have directed the Board of

Examiners-in-Chief to entertain the appeal of Lowry

from the decision of the Primary Examiner, notwith-

standing Rule 124, since if he should have done so

the order of the Supreme Court of the District of

Columbia for a writ of mandamus was proper and

should have been affirmed, and if he should not have

done so the order of the Supreme Court of the District

of Columbia for a writ of mandamus was improper and

the Court of Appeals properly reversed the lower

Court.

Whether the Commissioner of Patents should or

should not have ordered the Board of Examiners-in-

Chief to entertain the appeal of Lowry, depends upon

the true meaning of Secs. 482 and 4909 of the Revised

Statutes of the United States, which sections are as

follows:

Sec. 482. The Examiners-in-Chief shall be per-

sons of competent legal knowledge and scientific

ability, whose duty it shall be, on the written

petition of the appellant, to revise and determine

upon the validity of the adverse decisions of

Examiners upon applications ‘for patents and for

reissues of patents, and in interference cases; and

when required by the Commissioner, they shall

hear and report upon claims for extensions, and

perform such other like duties as he shall assign

to them.

Sec. 4909. Every applicant for a patent or for

the reissue of a patent, any of the claims of which

have been twice rejected, and every party to an

interference, may appeal from the decision of the

Primary Examiner, or of the Examiners ttr@hief,

in charge of interferences in such case, to the

Board of Examiners-in-Chief, having once paid

the fee for such appeal.

SE COT EDITED OER NTS NL I ENS LE RETIN ME INE LM LNCS NI NR DLE IE ENE AS

8

PLAINTIFF’S CONTENTION.

An interference is a proceeding of a judicial clar-

acter instituted by the Commissioner of Patents

between rival applicants for a patent for the sar

invention, to determine which of the applicants i:

prior inventor, the determination of this questio.

fact being entrusted to a Primary Examiner in charg:

of Interferences with an appeal from said Primary

Examiner to the Board of Examiners-in-Chief, to the

Commissioner of Patents and to the Court of Appeals

of the District of Columbia.

Under the practice of the Patent Office (Rule 122),

certain questions arising in interferences, such, for

example, as a denial of the right of one of the parties

to make the claim, upon the ground that he has shown

no operative means to embody the inventional idea,

or that there is no interference in fact, because prop-

erly read, the rival specifications do not describe the

same invention, are referred for determination to that

one of the Primary Examiners in whose division the

interference arose. These questions, and others of the

same character, are raised by a Motion to Dissolve the

interference.

In aeerke every interference case these two classes

of questions present themselves, and when they arise,

it is not until they have been determined that the

question arises, which party first made the invention?

It is obvious that these prior questions are funda-

mental in the case, for if there is no real interference,

when the rival specifications are properly read, or if

one or both of the parties has not completed any inven-

tion whatever by the production of an operative means,

it is clear that the question which of the two parties

is prior in date, is of no interest. The interference

9

would fall upon a decision that the parties did not

describe in their specifications the same invention,

or a decision that one or both of the parties had not

produced an operative device.

‘These questions are no less important and absolutely

controlling than is the question of dates.

Palmer vy. Lozier, 90 Fed. 732. (C. C. A. 8th,

1898. )

‘In a suit in equity under the Revised Statutes

$4918 to obtain an adjudication between inter-

‘fering patents, the Court is not limited te a

determination of the question of priority of inven-

tion between the interfering patentees. The

statutes necessarily presuppose a patentable in-

vention as the subject matter of the litigation and

if it should appear that neither of the patents in

suit is valid, for want of such patentable inven-

tion, the Court is not required to perform the

useless task of considering and adjudicating pri-

orities between them, but should dismiss the bill

and deny relief to either party.”

Podlesak v. MeInnerney, 120 O. G. 2127. (C. A.

D. C. 1906.)

‘‘The question of the right of a party to make

a claim goes to the very foundation of an inter-

ference, for if the party has not such right, the

interference falls. If it be incorrectly held that

such party has a right to make the claim, priority

may be awarded to him and his adversary deprived

of a substantial right in that he is not given a

claim where he necessarily is the prior inventor,

his adversary never having made the invention.

Manifestly that question should not be finally

determined by the Primary Examiner’ who

originally declared the interference.”’

It is utterly immaterial what the truth may be as

to alleged dates of invention if one of the contestants

10

has in fact made no invention at all or the rival inven-

tions are not the same invention.

These ‘‘foundation’’ questions being raised by one of

the parties, by a motion to dissolve the interference,

a decision of this motion by the Primary Examiner

upon the ground that the rival specifications do not

describe the same invention, is appealable for both

parties, under Rule 124, to the Commissioner. A

decision granting the motion to dissolve the interfer-

ence, for the reason that the other party does not show

operative means and has therefore completed no in-

vention, gives a right of appeal, under Rule 124, to

the Board of Examiners-in-Chief. A decision denying

the motion upon the ground that the other party’s

specification does show an operative device and that

the other party therefore has a right to make the

claim, gives no right of appeal to the moving party.

Note, that the same motion is appealable to two dif-

ferent appellate tribunals according to the reasons for

which the motion is allowed or denied and that a de-

cision by the Primary Examiner against the moving

party, who raises this ‘‘foundation’’ question, gives

no right of appeal whatever under paragraph 2 of

Rule 124 and is a final and unreviewable decision,

binding upon the parties and binding also upon the

Examiner of Interferences (Rule B26)MIB)22, p 2. ont )

*126. The Examiner of Interferences or the Examiners-in-Chief

may, either before or in their decision on the question of priority,

direct the attention of the Commissioner to any matter not

relating to priority which may have come to their notice, and

which, in their opinion, establishes the fact that no interference

exists, or that there has been irregularity in declaring the same

(Rule 122) or which amounts to a statutory bar to the grant

of a patent to either of the parties for the claim or claims in

interference. The Commissioner may, before judgement on the

Il

ji is obvious, as a matter of common sense and

conmuon justice that a decision upon a fundamental

question by a primary tribunal should be reviewable

and should not be finally determined by any one man,

however upright and learned, and more especially

when the moving party, upon a motion to dissolve

based upon one of these fundamental grounds, is sent

for a decision upon his motion to the very tribunal

which has already, in the declaration of the interfer-

ence, committed itself to the proposition that the

interference is proper. It is a heavy handicap for

the meving party in any event to overcome the natural

pre-judgment of the tribunal, without being irrevo-

cably bound by the decision.

The Court of Appeals of the District of Columbia,

notwithstanding its decision in this case, that the

moving party Lowry had no statutory right of appeal

and was irrevocably bound, recognized the gross in-

justice of such a pocedure, in the very recent decision

of Podlesak v. MeInnerney, 120 O. G. 2127, in which

the Court, by Mr. Justice Duell, says:

‘‘The question of the right of a party to make

the claim goes to the very foundation of an inter-

ference, for if the party has not such a right the

interference falls. If it be incorrectly held that

such a party has a right to make the claim, priority

question of priority, suspend the interference and remand the case

to the Primary Examiner for his consideration of the matters

to which attention has been directed. From the decision of

the Examiner appeal may be taken as in other cases. If the

case shall not be so remanded, the Primary Examiner will, after

judgment, consider any matter affecting the rights of either

party to a patent which may have been called to his attention,

unless the same shall have been previously disposed of by the

Commissioner.

IBS ALLE LEED EGE OS ELLE LO NLL ODL BO III ESE E LORE MAE I LE EDELMAN AOL oe HEE

12

may be awarded to him and his adversary be

deprived of a substantial right in that he is not

given a claim where he necessarily is the prior in-

ventor, his adversary never having made the

invention. Loenetnen | that question should not

be finally determined by the Primary Examiner

who originally declared the interference.”

It is obviously the opinion of the Court of Appeals,

when Allen v. U. S. ex rel. Lowry (the present case)

is considered in connection with the later case of

Podlesak v. MecInnerney, that a review should have

been given as a matter of justice but that the statutes

do not require it.

In the conclusion of the Court that the statutes do

not provide for a review of such a ‘foundation ques-

tion’’ the plaintiff in error disagrees and contends

that upon the face of Sec, 4909, as a matter of plain

English, and upon settled principles of statutory

construction, it is absolutely clear that the plaintiff

in error, Lowry, being a ‘‘party to an interference”

. ‘may appeal from the decision of the Primary

Examiner”’.. . ‘‘to the Board of Examiners-in-Chief.”’

Upon the face of Sec. 482 as a matter of plain En-

glish the plaintiff in error contends that it is the duty

of the Board of Examiners-in-Chief to entertain the

appeal thus provided in See. 4909: ‘‘whose duty it

shall be on the written petition of the appellant to

revise and determine upon the validity of the adverse

decisions of Examiners . . . in interference cases.”

Section 4909 creates a statutory right.

See 4909: Every applicant fer a patent or for

the reissue of a patent, any of the claims of which

have been twice rejected, and every party to an

interference, may appeal from the decision of the

Primary Examiney, or the Examiner in charge of

eyes YD al a hal aa ale Ek aE ER ean cath, oc

13

Interferences in such case, to the Board of Exami-

ners-in-Chief; having once paid the fee for such

appeal

Section 482 creates a statutory duty.

Sec, 482: The Examiners-in-Chief shall be per-

sons of competent legal knowledge and scientific

ability, whose duty it shall be, on the written

petition of the appellant to revise and determine

upon the validity of the adverse decisions of ex-

aminers upon applications for patents, and for

reissues of patents, and in interference cases; and

when required by the Commissioner, they shall

hear and report upon claims for extensions, and

perform such other like duties as he may assign

them.

STATUTORY CONSTRUCTION.

It is elementary law in statutory construction that,

in the interpretation of any statute, the ordinary

meaning of its words and language must be control-

ling.

Maillard v. Lawrence, 16 How. 251.

The intent of the Legislature is, of course, to be con-

sidered, in construing the statute, but that intent is

to be discovered from the statute itself in its various

parts and not from considerations dehors the statute.

U.S. v. Wiltberger, 5 Wheaton, 76.

Unless the statute itself be ambiguous or contra-

dietory in its parts.

Ruggles v. Illinois, 108 U. 8. 526.

But where the statute is not ambiguous there is no

room for construction, no reason for resort to extrinsic

evidence of the intention of the law makers.

Ruggles vy. Lilinois, 108 U. 8. 526.

Pitman vy. Flint, 27 Mass. 504.

And an argument of inconvenient results or even

14

gross injustice can have no weight where the statute

is plain and unambiguous.

Putnam v. Longley, 28 Mass, 487.

Pitman v. Flint, 27 Mass. 504.

COURSE OF LEGISLATION,

While evidence of the intention of the Legislature

must be sought in the statute which is to be construed,

it is supposed that the general course of legislation

dealing with appeals in the Patent Office may be

pertinent and cast a light upon the intention of the

Legislature in enacting Sections 482 and 4909,

As a basis for consideration of this sort and in sup-

port of the contention of the plaintiff in error that the

course of prior legislation on this subject indicates

that the Congress intended an appeal to lie in a case

like the present, a very succinct history of the prior

legislation bearing upon the subject will be under-

taken.

PRIOR LEGISLATION.

By the first Patent Act of 1780 (1 Stat. 109), the

Secretary of State, the Secretary of War and the

Attorney General were given power ¢o grant patents,

without examination as to novelty or originality.

By the Act. of 1793 (1 Stat. 318), the Secretary of

State was made the agency for the grant of patents

and provision was made, in the case of interfering ap-

plications that the claims of the rival applicants should

be submitted to three arbitrators, whose decision was

final.

By the Act of 1836 (5 Stat. 117) the Patent Office

was established and the Office of Commissioner of

Patents created, and the Commissioner was required

‘*to make, or cause to be made, an examination of the

alleged new invention or discovery,’’ and the Com-

yews ee CR PP ie tate eal fied” “lel pet Alin

15

missioner was given authority to appoint an examin-

ing clerk to assist him in his duties. Provision was

also made for a special Board of Examiners, consist-

ing of three disinterested persons, to entertain appeals

from the Commissioner. This Board was a temporary

Board appointed for each occasion.

The Act of 1839 (5 Stat. 353) increased the ex-

amining force and gave an appeal from the Com-

missioner of Patents to the Chief Justice of the District

Court of the United States for the District of Columbia,

the appeal to a temporary Board of Examiners being

done away with.

By the Act of 1849 (9 Stat. 395) the Patent Office

was transferred to the Department of the Interior from

the Department of State.

By the Act of 1852 (10 Stat. 75) the right of appeai

from the Commissioner of Patents was extended to

include the assistant judges of the Circuit Court of

the Distriet of Columbia.

It will be noted that up to this time the Commissioner

of Patents is himself the Primary Examining Agency,

having clerical assistants, with provision for appeal

from the primary decisions of the Commissioner to

other tribunals, temporary or permanent.

The Act of 1861 (12 Stat. 246) is as follows:

‘See, 2. And be it further enacted, That for the

purpose of securng greater uniformity of action

in the grant and refusal of Letters Patent, there

shall be appointed by the Pesident, by and with

the advice and consent of the Senate, three Exam-

iners-in-Chief, at an annual salary of $3000. each,

to be composed of persons of competent legal

knowledge and scientific ability, whose duty it

shall be, on the written petition of the applicant for

that purpose being filed, to revise and determine

SRB patie aa ete NMR PORE SF EERE M920 APLAR TE CK RPL TEN. ANE aE

Va ad AT Bi Ald EF tite

16

upon the validity of decisions made by Examitiers

when adverse to the grant of Letters Patent, and

also to revise and determine in like manner wu)on

the validity of the decisions of Examiners in in-

terference cases, and when required by the Com-

missioner in applications for extension of patents,

and to perform such other duties as may be as-

signed to them by the Commissioner; that from

their decisions appeals may be taken te the Com-

missioner of Patents in person, upon payment of

the fee hereinafter prescribed; that the said Ex-

aminers-in-Chief shall be governed in their action

by the Rules to be prescribed by the Commissioner

of Patents.”’

“Sec. 3. And be it further enacted, That no ap-

peal shall be allowed to the Examiners-in-Chicf

from the decisions of the Primary Examiners, ex-

cept in interference cases, until after the applic a-

tion shall have been twice rejected; * * * ahi

This act created a revolution in the Patent Office in

its theory and mode of operation. The Examiners,

formerly the Commissioner’s clerical assistants, he-

came under the Act of 1861 the tribunal of first

instance. The Commissioner became an appellate tri-

punal and the newly-created Board of Examiners-in-

Chief became an an intermediate appellate tribunal

between the Primary Examiners and the Commissioner

of Patents.

It will be observed that the Examiners-in-Chief un-

der the Act of 1861 derived their authority directly

from the statute and that their duty is clearly set forth

by the statute and that their office comes by direct ap-

pointment of the President, by and with the advice

and consent of the Senate.

It is fair to say, therefore, that the Board of Ex-

aminers-in-Chief thus created is an independent, in-

termediate, appellate tribunal, whose jurisdiction and

17

duty is created and defined by the statute.

isy the Patent Act 1870 (Sec. 2), superseding prior

legislation, it is enacted that:

(R. S. U.S. Sec. 476.) ‘*There shall be in the

Patent Office a Commissioner of Patents, one As-

sistant Commissioner and three Examiners-in-

Chief, who shall be appointed by the President .. .

all other officers ... authorized by law for the of-

fice shall be appointed by the Secretary of the In-

terior.”’

Section + of the Patent Act of 1870 is as follows:

(R.S. U.S. Sec. 440.) ‘*There shall also be in the

Department of the Interior ... In the Patent Of-

fice: One Examiner in charge of Interferences.”’

Section 10 of the Patent Act 1870 is as follows.

(R.S. U.S. See. 482.) ‘*The Examiners-in-Chief

shall be persons of competent legal knowledge and

scientific ability, whose duty it shall be, on the

written petition of the appellant, to revise and

determine upon the validity of the adverse de-

cisions of Examiners upon applications for patents,

and for reissues of patents, and in interference

cases.”’

Section 19 of the Patent Act 1870 is as foliows:

(R. 8S. U. S. See. 483.) ‘The Commissioner of

Patents, subject to the approval of the Secretary

of the Interior, may from time to time establish

regulations, not inconsistent with law, for the con-

duct of proceedings in the Patent Office.”’

Section 42 of the Patent Act of 1870 is as follows:

(R.S. U.S. Sec. 4904.) ‘* Whenever an applica-

tion is made for a patent which, in the opinion of

the Commissioner, would interfere with any pend-

ing application, or with any unexpired patent, he

shall give notice thereof to the applicants or ap-

plicant and patentee, as the case may be, and shall

direct the Primary Examiner to proceed to deter-

18

mine the question of priority of invention. And

the Commissioner may issue a patent to the party

who is adjudged the prior inventor unless the ad-

verse party appeals from the decision of the

Primary Examiner, or the Board of Examiners-

in-Chief, as the case may be, within such time, not |

less than 20 days, as the Commissioner shall pre- |

eribe.”’

Section 46 of the Patent Act of 1870 is as follows:

(R. S. U. S. See. 4909.) ‘Every applicant for

a patent or for the reissue of a patent, any of the

claims of which have been twice -rejected, and

every party to an interference, may appeal from

: the decision of the Primary Examiner, or of the

; Examiner in charge of Interferences in such case,

to the Board of Examiners-in-Chief; having once

: paid the fee for such appeal.”’

’ Section 47 of the Patent Act of 1870 is as follows:

4 (R. S. U. S. See. 4910.) “Tf such party is dis-

: satisfied with the decision of the Examiners-in-

Chief, he may, on payment of the fee prescribed,

appeal to the Commissioner in person.”’

By the Act of February 9, 1893, the jurisdiction of the

5 Supreme Court of the District of Columbia upon ap-

peals from the Commissioner of Patents was vested

in the newly-created Court of Appeals for the Dis-

3 trict of Columbia. And by See. 9 of that Act it was

; enacted that ‘‘Any party aggrieved by a decision of

; the Commissioner of Patents in any interference

case may appeal therefrom to said Court of Appeals.”

The above sections are those which are pertinent

to the matter of appeals in interference cases. Of

the statutes cited Sections 2, 4, 10, 19, 42, 46 and 47

of the Patent Act of 1870 have become respectively,

Sections 476, 440, 482, 483, 4904, 4909 and 4910 of the

Revised Statutes of the United States.

Section 2 of the Act of 1861, Sec. 482, See. 4904,

ER ee re ee

pew itida ie

19

Sev, 4909, See. 4910 R. S. U.S. and Sec. 9 of the Aet

of \’ebruary, 1893, all specifically relate to appeals in

interference cases, and in every one of these sections

it is provided that both parties in the interference have

the right of appeal in interferences, from the Pri-

mary Examiner. (Secs. 4904, 4909.)

Note that Sec. 4909 distinctly refers both to the Pri-

mary Examiner of Interferences and to the Primary

Examiner (mechanical) thus making it clear that there

is no confusion as to just which Primary Examiner

it was intended to give an appeal from.

Note that Sees. 4909 and 482 distinctly refer to ap-

peals both in ex parte cases and in interference

cases thus making it clear that appeals in both classes

of cases from both classes of examiners were contem-

plated by the Legislature.

It will be observed that by Sec. 482, certain changes

are introduced over the Act of 1861, Sec. 2, namely,

whereas under the Act of 1861 the jurisdiction of the

Examiners-in-Chief attached ‘‘on the written petition

of the applicant;’’ under the Act of 1870 the jurisdic-

tion of the Examiners-in-Chief attached ‘‘on the

written petition of the appellant.’’ Also that where-

as under the Act of 1861 it was the duty of the Board

upon petition of an applicant ‘‘to revise and deter-

mine upon the validity of decisions made by Examiners

when adverse to the grant of Letters Patent,’’ and

also ‘to revise and determine in like manner upon

the validity of decisions of Examiners in interference

cases,’’ under the Act of 1870 the duty is set out ‘‘on

the written petition of the appellant to revise and

determine upon the validity of the adverse decisions

of Examiners upon applications for patents, and for

reissues of patents, and in interference eases.”’

ae eee

1 ia See Ee Sle Sie ea is a staat —

Banu

20

INFERENCES FROM “COURSE OF LEGISLATION.”

It is clear upon consideration of the statutes above

qudéted that it was the intent of Congress to errect

in the Patent Office a Board composed of persons

learned in the law and in science. (Act of 1861, See.

10 of Act of 1870 and R. S. U.S. $482.)

‘“The examiners in charge shall be persons of

competent legal knowledge and scientifie ability.”

The object of creating such a Board being to give

uniformity and continuity to the practice and de-

cisions of the Patent Office. The preamble to the

Act of 1861 shows this:

‘*And be it further enacted, that for the purpose

of securing greater uniformity of action in the

grant and refusal of Letters Patent.”’

It is also clear upon consideration of the statutes

above that the right of review by this specially quali-

fied Board of Examiners-in-Chief, which was clearly

intended to serve as a fly wheel for the Patent Office,

was intended to be secured to ALL parties upon ALL

material questions. Language could not be more ex-

plicit to that effect.

“See. 482. The Examiners-in-Chief shall be

persons of competent legal knowledge and scien-

tific ability whose duty it shall be, on the written

petition of the appellant, to revise and determine

upon the validity of the adverse decisions of Ex-

aminers upon applications for patents and for

reissues of patents and in interference cases.”’

‘See. 4904. And the Commissioner may issue

a patent to the party who is adjudged the prior

inventor unless the adverse party appeals from

the decision of the Primary Examiner or the

Board of Examiners-in-Chief, as the case may be.”

~ “See. 4909. Every applicant for a patent or for

the reissue of a patent, any of the claims of which

Ee ne ee ee et) Sa

21

have been twice rejected and every party to an

interference may appeal from the decision of the

Primary Examiner or of the Examiner in charge

of interference in such case to the Board of Ex-

aminers-in-Chief, having once paid the fee for such

appeal.”’

Attention is called to the fact that there is no pro-

vision in the statutes for any appeal upon any question

from any of the primary tribunals, direct to the Com-

missioner of Patents, but, on the contrary, explicit

provision that the line of appeal shall be from the

Primary Examiner, whether he be Mechanical Ex-

aminer or the Interference Examiner, to the Board of

Examiners-in-Chief and from the Board of Exam-

iners-in-Chief to the Commissioner in person.

A comparison of Rule 124 with these statutory re-

quirements as to appeals shows that the rule practical-

ly nullifies the statutory provisions and practically

.eviscerates the jurisdiction of the Board of Examiners-

in-Chief, since it provides that.

‘124. Appeal may be taken directly to the

Commissioner from decisions on all motions ex-

cept the following:

(1) On motions to dissolve which deny the

patentability of applicant’s claim;

(2) Upon motions to dissolve which deny the

right of an applicant to make the claim;

(3) On motions involving the merits of the in-

vention.

Under the motions thus made appealable to the Com-

missioner of Patents directly is the appeal on motion

to dissolve on the ground of ‘‘no interference in fact,”’

which is held to mean that the rival specifications do

not describe the same invention, i. e., a pure question

of legal construction of documents is taken from the

only tribunal in the Office required by law to have

= _ ~ ae

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———— ——s oe

22

legal knowledge, direct to the Commissioner, who iiay

be, but is not required to be, a lawyer. (See table of

appeals below.)

By the second paragraph of Rule 124, the right of

appeal, even on the three motions which appear |y

paragraph 1 of the rule to be appealable elsewhere

than to the Commissioner in person, is further re-

stricted (Rule 124, Par. 2) since ‘‘from a decision af-

firming the patentability of the claim or the apypli-

cant’s right to make the same, no appeal can be taken.”’

Thus, of the three matters which by paragraph 1 of

Rule 124 are appealable elsewhere than to the Com-

missioner in person, two are appealable only in favor

of one party to the interference and the other party,

upon an adverse decision of these two questions, is

denied any right of appeal whatever.

MOTIONS HEARD BEFORE THE PRIMARY ME-

CHANICAL EXAMINER AFTER DECLARATION

OF INTERFERENCE.

Motions to dissolve on the ground of

(a) No interference in fact (construction of

rival specifications). Appeal for both parties to

the Commissioner.

(b) Irregularity in declaration. Appeal for

both parties to the Commissioner.

(c) Claim unpatentable. Appeal for one party

only to the Board of Examiners-in-Chief.

(d) No right to make the claim. Appeal for

one party only to the Board of Examiners-in-Chief.

(e) Motion to shift the Burden of Proof. Ap-

peal for both parties to the Commissioner.

(f) Motion to Reform the Interference. Ap-

peal for both parties to the Commissioner.

Prior to 1870 the various Primary Examiners de-

cided all questions arising in an interference and from

decisions an appeal might be taken to the Board of

23

Exaiminers-in-Chief. (Opinion below, Record, p. 30.)

Under the Patent Act of 1870, Section 4, provision

was for the first time made for an ‘‘Examiner in

charge of Interferences”’ and for some little time after

the creation of this officer he had entire charge of all

matters relating to interferences and an appeal lay to

the Board upon all questions.

(Opinion below, Record, p. 32.) ‘The aet of 1870

having provided for an Examiner of Interferences,

provision was made in Rule 59, of July 15, 1870, for

their trial before such officer. Its full provisions are

as follows:

“59. Cases of interference will, when the issue

is made up and the testimony taken, be tried be-

fore the Examiner of Interferences. If the in-

terference has been properly declared, it will not

he dissolved without judgment of pricrity, found-

ed upon the testimony or the written concession

of one of the parties, unless the invention is found

not to be patentable, or to have been abandoned,

or that it has been in public use for more than two

years prior to the application of either party, or

that no in

This text is long and has been trimmed here. Open the source document for the complete record.