specially concurring:
I concur in the conclusion reached by the majority. I write a separate opinion only for the purpose of calling attention to certain aspects of the so-called estoppel issue therein decided. My views and those of my associate, Presiding Judge Garrett, on the doctrine of estoppel in general as applying to the Patent Office were expressed at some length in Avery v. Chase, 26 C. C. P. A. (Patents) 823, 101 F. (2d) 205, and Dirkes et al. v. Eitzen, 26 C. C. P. A. (Patents) 1198, 103 F. (2d) 520. I also expressed my individual views on another phase of the doctrine in In re Rhodes, 23 C. C. P. A. (Patents) 816, 80 F. (2d) 525.
The doctrine of estoppel to which reference is here made was, to the best of my knowledge, first applied in Patent Office matters in Blackford v. Wilder, 28 App. D. C. 535, by the Court of Appeals of the District of Columbia (now the United States Court of Appeals for the District of Columbia). It was there said:
* * * Applying the well-settled principle of estoppel by judgment, before stated, it follows inevitably that the final decision in the first interference .is coiidltisive, unless it can be made to appear that the question upon which the determination of the second case rests is one that neither was nor could have been presented and determined in the first case.
The doctrine applied there was an old one — legal estoppel, arising from matter of record (Black’s Law Dictionary, Third Edition, page 688)- — and the novelty of the decision was that it made the doctrine apply to claims of a losing party in a Patent Office interference proceeding. The decision was sound and has been approved many, many times. It did nothing more than apply the old and well-known doctrine of estoppel based upon res judicata.
In addition to the so-called legal estoppel arising from r&s judicata, the doctrine of estoppel in fais is an old one, having been frequently applied by the courts long before application was made of it to patent matters. The Supreme Court of the United States in Dickerson v. Colgrove, 100 U. S. 578, 580, commented on this doctrine as follows:
The estoppel here relied upon is known as an equitable estoppel, or estoppel in pais. The law upon the subject is well settled. The vital principle is that he who by his language or conduct leads another to do what he would not otherwise have done, shall not subject such person to loss or injury by disappointing the expectations upon which he acted. Such a change of position *901is sternly forbidden. It involved fraud and falsehood, and the law abhors both. This remedy is always so applied as to promote the ends of justice. It is available only for protection, and cannot be used as a weapon of assault. It accomplishes that which ought to be done between man and man and is not permitted to go beyond this limit. * * *
This is the true doctrine of equitable estoppel applied by law and equity courts, but it should never be applied in patent matters unless the fundamental elements on which such equitable estoppel is based •are preseiit. ' The aforesaid legal estoppel-, based upon res judicata,- .and estoppel in pais are the doctrines which seem to be now followed by the United States Court of Appeals for the District of Columbia. See International Cellucotton Products Co. v. Coe, 66 App. D. C. 248, 85 F. (2d) 869, and American Cyanamid Co. v. Coe, 70 App. D. C. 330, 106 F. (2d) 851.
Subsequent to the decision in the case of Blackford v. Wilder, supra, the Patent Office by rule, now 109, provided that a party involved in an interference case may bring forward other applications involving any other pertinent common patentable subject matter which existed between any of the parties to the interference. Presumptively he was expected to bring forward matters which could be adjudicated in that interference. It was held, under such circumstances, by the United States Court of Appeals for the District of Columbia and this court that his failure to do so resulted in estoppel against his later making claims to said subject matter. Later, this court went further and held that even though the issue could not have been.adjudicated in the interference in which he was engaged, and even though there was no final adjudication therein, and even though the claims embraced in the issue stood rejected, he must, nevertheless, bring it forward in order that a separate interference might be set up between himself and any one of the parties engaged in the interference, and if he failed to do so, he was, by some kind of estoppel, barred from having the claims. It is too obvious for comment that in the latter case neither of the doctrines above referred to could possibly apply.
This court in In re Chase, 21 C. C. P. A. (Patents) 1183, 71 F. (2d) 178, and In re Long, 23 C. C. P. A. (Patents) 1078, 83 F. (2d) 458, took the position that under the facts of those cases no ground of estoppel existed.- In the Ghase case the claims, which Chase was held to be estopped from obtaining could not have been adjudicated in the interference in which he was engaged, and a separate interference had to be set up in order to give an opportunity for him to contest with another. The second interference was set up by the examiner and Chase came forward and was obviously able (as he was later) to -clearly show his first inventorship (in Avery v. Chase, Avery admitted he was not the first inventor) and this court, in In re Chase, *902supra, said Chase was not estopped. In other words, res judicata did not apply because the claims could not have been adjudicated in that interference. Estoppel in pais did not apply because Chase was guilty of no conduct to which the doctrine was applicable, and other essential facts for the application of the doctrine were absent. There was no final decision in the first interference.
However, in Avery v. Chase, supra, which involved the claims allowed to Chase in the aforementioned In re Olíase case, the majority of this court reversed this court’s original holding in the Ghase case and held that he was estopped, thus departing from the doctrine of estoppel by reason of res judicata and estoppel in pais, and proceeded down the perilous road of applying a doctrine of estoppel (whether regarded as equitable estoppel or not, I don’t know) whenever an interference party failed to bring forward a claim, even though he was obviously the first inventor and even though the claim could not have been adjudicated therein, and-even though he did. everything reasonabfy expected of him to do in order to prove his priority.
I have heretofore had occasion to mention, in substance, the fact that the doctrine which is most easily extended to an absurdity is one which should not have been applied in the first place. In Dirkes v. Eitzen, supra (and I notice that the majority does not cite it as authority for anything it has held or holds here), the full force and evil effect of the unnecessary and unjustifiable extension of a doubtful doctrine is disci osed in its fullest. There the majority held that Eitzen was estopped from bringing forward- a claim-which, during-the motion period in the interference, stood unallowed to him, and he had taken appeal from the disallowance thereof and on the appeal won a holding that the claim was patentable to him. The examiner, having been reversed on the allowance of the claim, properly declared an interference to give Eitzen the opportunity to contest with his adversary. Upon motion to- dissolve, the Patent Office held that he was not estopped, evidently upon the theory that the claim was not patentable subject matter upon which adjudication of priority could have been had. This court reversed the Patent Office and held, in substance, that Eitzen should have brought forward the claim notwithstanding the said disallowance and pending appeal. It is obvious that res judicata did not apply. There was no conduct that made applicable the doctrine of estoppel in pais, and so the remaining possible reason for applying the so-called estoppel was'that he had simply failed to bring forward during the motion period a claim which at that time was held by tire Patent Office to be unallowable to him and concerning which obviously no adjudication as to priority could have been made in the interference involved.
*903Night here I think it proper to say, and the thought is not new with me, that outside of estoppel based upon res judicata and estoppel in pais, both of which doctrines are sound and properly applicable to patent- matters, all other cases which involve the doctrine of so-called estoppel do nothing more than to sanction the imposition of a “bar” against one claiming that he is the first inventor. I say this notwithstanding the fact that in many of the latter type of cases attempt was made to bring them within the prescribed limits of the first two well-known doctrines. I have no quarrel with true estoppel and if Congress imposes a “bar” as a penalty against the first inventor “in the interest of orderly Patent Office procedure,” the Patent Office and the courts would find justification in penalizing the first inventor and there would result no confusing uncertainty such as now exists. See Meigs, Time the Essence of Patent Law, p. 146; Journal of the Patent Office Society, Volume XXII, page 512. It is my view, after mature consideration, that court-made bars which are strangers to laAv and equity should rarely, if ever, be imposed, and if imposed it should not result in giving the second or subsequent inventor the disputed subject matter.
Now, to the instant case. In the first place, I see no reason for deciding the so-called estoppel issue in this case inasmuch as the court holds against appellee on the merits. But, if it evidences a disposition to make exceptions to what I regard, and I say it respectfully, as the said loose applications of the doctrine of estoppel, I must give my approval to this exception. Of course, in the instant case, Browne is not estopped from claiming the subject matter of the counts involved under the doctrine of res judicata or estoppel in pais. If the decision in the first interference had been final, both parties were equally estopped after the expiration of the motion period in the first interference because the subject matter could have been adjudicated in that interference, and since under the doctrine of estoppel by res judicata all things that could have been adjudicated must be regarded as adjudicated. Obviously, since there was nothing finally adjudicated, res judicata doesn’t apply. Browne did nothing to the disadvantage of his adversary, by failing to claim, any more than his adversary did to him, and so estoppel in-pais does not apply, but (and here’s the point to be emphasized), he failed to comply with rule 109 during the motion period. As I understand the previous decisions of the majority, they are to the effect that in. the interest of orderly procedure and to avoid multiplicity of litigation, if one fails during the motion period to assert a claim, regardless of whether it could have been adjudicated in that interference or not, and regardless of whether there was or was not a final decision, he is thereafter estopped from claiming against his former adversary the subject matter which he failed to bring *904forward. It is my understanding that it is the practice of the Patent Office to give to parties invoking the so-called estoppel the subject matter of the issue in controversy.
The point I seek to make is that if the prior decisions of the majority are correct, estoppel does apply to Browne. By getting into another interference in which there was a third party who quickly withdrew, under the instant decision of the majority, Browne avoids the application of estoppel, although the majority says that at one time he stood estopped.
The majority has not considered a related estoppel doctrine which is estoppel against estoppel, i. e., estoppel' from raising'the question of estoppel. See 21 Corpus Juris 1139. Quaere: Since Saunders did the same thing Browne did, should he be held estopped from raising the question of estoppel against Browne? Since I don’t think any kind of estoppel or bar applies to Browne, I will not pursue this inquiry.
As I read the majority opinion, it holds that although the instant issue could have been adjudicated in the first interference, it was not adjudicated since there was no final decision. This suggests that the holding is based upon the correct premise that the elements of estoppel by res judicata are not present. It is clear that the conduct of the parties lacks a number of elements to make applicable the doctrine of estoppel in pais. It is to be noted that they followed the suggestion of the Patent Office and contested priority in the interference set up for the purpose. This last fact, and the lack of finality of decision in the first interference were pi*esent in In re Chase, supra.
To hold, as I think the majority does hold, that Browne.is not estopped from claiming the instant subject matter upon the ground that he failed to bring forward under rule 109 the disputed claims at a time when and place where the issue might have been adjudicated, merely because there was no final decision in the first interference, is to, in effect, reverse certain decisions of this court — and I am in favor of reversing some of them- — although in some of the decisions which should be reversed I concurred, I regret to say. In In re Alexanderson, 21 C. C. P. A. (Patents) 983, 69 F. (2d) 541, Alexanderson was estopped from obtaining claims because he failed to bring forward the involved subject matter in an interference in which he was engaged, although that interference did not go to decision. In Avery v. Chase, supra, the majority held Chase estopped, although the first interference was dissolved without decision, and another interference was set up for the purpose of giving him the right to prove priority, and was conducted during the period before the first interference was dissolved. In that case the majority decision did not overlook the fact that there was no final decision in the first interference, for it said:
*905We think it clearly appears from the record that interference! No. 60,503 was initiated by the Primary Examiner. In view of our conclusion, we do not find it necessary to decide whether interference No. 57,166 had been terminated by dissolution at the time interference No. 60,503 was declared, but we shall assume, as appellee contends, that it had not been terminated.
In In re Austin, 17 C. C. P. A. (Patents) 1202, 40 F. (2d) 756, there was no finality of decision in the first interference, and this court in Avery v. Chase, supra, referring to said Austin case, said:
* * * While said interference was pending [in the Austin case] but long after the motion period under rule 100 of the Rules of the United States Patent Office had expired, the said common assignee moved that the interference be reformed by admitting thereto the sole application of Austin. In connection with said motion an affidavit was presented in behalf of the common assignee setting forth reasons why said motion was not made within the motion period. The Patent Office tribunals denied said motion, and in an ex parte prosecution by Austin the matter came before us. We held that, the common assignee having failed to move within the motion period to admit the Austin application, Austin and his assignee were estopped from making claims which might have been adjudicated in that interference. In our decision we stated:
«* * * Furthermore, if a party to an interference fails to comply with the rules of the Patent Office relative to the presentation of such claims, it is' thereafter estopped from presenting them as a basis for another interference between the same parties. [Citing cases.]
* * * * * * *
“It is true, as argued by counsel for appellant, that, at the time the common assignee moved to reform interference No. 51235 by admitting appellant’s application as to counts 1 and 2 and other claims, the question of priority had not been determined; whereas, in the cases hereinbefore referred to, the issues of priority had been decided. However, the principle announced in the cited eases is applicable here, and, if the rules of the Patent Office are to be given any force and effect, this is a proper ease for their application, otherwise, the common assignee of several applications could subject an applicant involved in an interference with one of its applications to prolonged, expensive, and vexatious litigation.”
It will be noted that in this [Austin] ease estoppel was based wholly upon failure of appellant to act within the motion period provided by rule 109. The interference had not been terminated when it was sought to add the Austin-application to the interference, so that estoppel under the doctrine of res acljuclieata was not involved. * * *
Also in Avery v. Chase, supra, is found the following:
Attention, however, is called to the fact that Shimer [referring to the case of In re Shimer, 21 C. C. P. A. (Patents) 979, 69 F. (2d) 556] sought the interference while the original interference was pending, and that it was held that he was estopped from making the involved claims solely because of his failure to seek an interference before the expiration of the motion period under rule 109.
Attention might be called to the fact that the majority in the instant case has emphasized that each of the parties had the right to contest priority with Buchner in the second interference, and its holding is to the effect that appellee should not be estopped from *906claiming what lie bad a right to contest with the third party. The difficulty with that position is that it is not here questioned that Browne is not estopped from claiming it as against Buchner, but Buchner is out of the case, and the majority holds that Browne is not estopped from claiming it as against the appellant Saunders, notwithstanding the fact that, when Browne had the opportunity of bringing his claim forward and litigating it with Saunders, he failed to bring forward his common patentable subject matter under rule 109. Under the prior holdings of the majority, unless estoppel against estoppel is applied, there is more reason to estop or bar Browne than there was to estop either Eitzen or Chase. But, notwithstanding the force of the prior decisions relating to estoppel, I agree with the majority that it should not be hold that Browne is estopped or barred, and, therefore, I concur in the conclusion reached by the majority that Browne, upon the merits of the case, did not show that he was the first inventor in law.