'dissenting:
The facts in the case are not in dispute and are clearly and succinctly stated in the opinion of the majority.
The majority found it unnecessary to pass upon the question as to whether or not the appellant had introduced his invention into this country prior to the filing date of the references upon which the claims were rejected. I am in agreement with the Patent Office tribunals that appellant failed to prove this important fact.
There is but one issue, which is also clearly stated in the majority opinion. The phrase in Patent Office rule 75 “and the applicant shall make oath to facts showing a completion of the invention in this cou/n-try before the filing of the application on which the domestic patent issued” [italics not quoted] is the basis for the rejection by the Patent Office of appellant’s involved claims. The issue presented is: In view of the language used by Congress in section 4886, R. S., was the Patent Office justified in applying to appellant’s application a rule which required him, in order to overcome prior cited patent references dis-. closing, but not claiming, the invention which appellant is claiming, to show by affidavit that he completed the invention in this country before the filing date of the references. In other words, the exact issue is whether or not making such a requirement by the Patent.0ffi.ee was a valid exercise of power contemplated by the framers of the patent statute.
*818The phrase in controversy — “in this country” — first became a part of the Patent Office rules in 1888. Annotated Patent Office Rules, Stoddard, page 309. It has, therefore, been in full force and effect for more than half of century. The Patent Office has always had, and must necessarily have, the power to adopt rules for its own guidance and for the guidance of the public in determining who was the first inventor within the contemplation of the patent statute. It exercises this right under definite, fixed rules in ex parte proceedings, such as we have before us, and in .interference proceedings where priority of invention is the issue to be determined. In interference proceedings, work done abroad in completing an invention may not be considered. Rebuffat v. Crawford, 21 C. C. P. A. (Patents) 901, 68 F. (2d) 980.
I cannot attribute to Congress the intent of giving a foreign inventor in an ex parte case the right to establish his priority of invention over a cited reference by relying upon the completion of his invention abroad and at the same time denying him the right to prove the same fact when he is in a contest for priority.
As I read the opinion of the majority, the conclusion is reached solely upon the ground that we are bound to hold that appellant is entitled to a patent upon the instant record solely on account of the holding of the Supreme Court in the case of Electric Storage Battery Co. v. Shimadzu et al., 307 U. S. 5. It is my view that that case is not pertinent in deciding the issue at bar. The facts in that case are wholly different from those here under consideration. There the Patent Office had granted to a citizen of Japan certain patents which formed the basis of an infringement action against the Electric Storage Battery Co. These patents were presumptively valid and courts of equity have always gone as far.as was logically possible to sustain and hold valid patents which constitute valuable property rights. The Japanese citizen, with two American patents, in that case was permitted to prove that his invention was completed in the foreign country before the alleged knowledge and use of the invention in the United States by the Electric Storage Battery Co. Let it not be forgotten that in that case the patents in controversy were American patents which this Government, through the Patent Office, had issued with the usual assurance that they extended a valid monopoly in which American capital could invest. The Electric Co. was not claiming that it, by •taking out a patent, had helped the American public, and the appellant here is not a patentee. Shimadzu was a patentee.
I see nothing incongruous about the Shimadzu, decision. The Supreme Court was there doing what is usually done in equity cases— sustaining the validity of an American patent against the attack of one who had evidenced no interest in the patent system. Since the Electric Co. had the right to defend itself by proof of prior knowledge and *819use, why should a foreign inventor with an American patent not be permitted to prove that he had completed his invention before such prior knowledge and use ?
The facts in that case differ so greatly from those at bar as to require the application of á different principle of law. Here is an English applicant, not a patentee, seeking to come into our Patent Office and claim that which had already been disclosed, not claimed and dedicated to the public. We are not here concerned with an issue relating to sustaining the validity of patent claims. By analogy to interference proceedings, priority of invention is involved. The best interests of the American patent system require, especially at this critical hour, that rights of the American public be protected and that a foreigner may not do under rule 15 that which he or one of our own people may not do when priority of invention is attempted to be proved in an interference proceeding.
The Solicitor for the Patent Office, in the instant case, makes the following clear statement concerning the BMmadm case:
* * * However, the Supreme Court [in the Bhmadm case] was careful to point out that there was no question of priority involved as between two applications, both filed in the United States Patent Office. The court pointed out that the patentee was the only one who had filed an application and that the work there to be relied upon as showing prior invention had never been brought to the benefit of the public by filing any application therefor in the United States Patent Office. * * *
* ******
* * * Rule 75 deals only with overcoming a patent which describes but does not claim the invention of the printed publication. As the Supreme Court was careful to point out, as has hereinbefore been noted, the case before the Supreme Court did not involve, by way of anticipatory matter, either a printed publication or a domestic patent. The matter raised by way of anticipation was merely knowledge-by another party and the party who had the knowledge in this country had never presented it to the Patent Office in an application for a United States patent.
It is my firm conviction that to hold that a'foreign applicant can prove by affidavit or otherwise that he made his invention in a foreign country and thereby deprive an American citizen of acquired patent rights ds opening Pandora’s box. Surely, Congress when it enacted section 4886, R. S., so as to encourage invention, industry and the investment of capital in this country, never intended such a result as the appellant here contends for. True enough, we give foreigners patents in this country as they do us, but we reward them because of what they do for us, and they have done nothing for us unless they disclose their inventions here, and the appellant disclosed his too late. To permit proof of the character submitted by appellant or suggested by the majority, respectfully submit, is opening the doors of the Patent Office to the possibility of fraud, perjury, inconvenience to Amer-*820lean citizens, and great damage to our patent system. While we may not read into the statute the phrase “in this country” when an issued .American patent is at stake, as in the SMmadzu case, it certainly does no violence to what I regard was the definite purpose of Congress in reading into it “in this country” when the question involved is the issuance of a patent to a foreign inventor. It is my view that if the present issue were before the Supreme Court of the United States, it would quickly and clearly distinguish the law applicable to the instant facts and its holding in the SMmadm case, supra. I can ■see no way that the Patent Office could have handled the situation any better than it did by inserting the controverted provision in the rule more than half a century ago. Now the majority has suggested an •amendment to the rule. Rule 75 would probably not have been kept in effect for fifty years by the Patent Office were it not for the controverted provision being contained therein. I do not choose to participate in making and passing upon the validity of a Patent Office rule before it is adopted by that tribunal.
It has long been well settled that language in a court decision applies only to the particular facts in that case and that courts will not strictly apply such language to different facts where incongruous results follow, and it is not enough to say that if we are wrong in our holding Congress can take cognizance of it. It is my view that in the enactment of section 4886 Congress, in the use of the term “Any person who has invented or discovered any new and useful art [etc.]” never contemplated such a construction thereof as would tend to tear down the system which it was establishing and rob the American people of privileges which they are entitled to enjoy.
The only authority directly in line on the instant issue is Ex parte Grosselin, 1901 C. D. 248. True enough it is only a P'atent Office decision, but it is so logical in its handling of the identical question here involved that it carries instant conviction with it. I will not quote therefrom, but i't is sufficient to say that in that decision Commissioner Allen pointed out that the foreign inventor there involved was doing nothing for this country, within the spirit of the patent law, when he made his invention abroad; that he disclosed nothing to the American public, and that the reward should properly go to him who, in compliance with the spirit of the law, first gave the American public the benefit of his ideas. In the instant case, the inventors of the two references clearly disclose that which the American public could understand and use at will and it is not reasonable to conclude that Congress ever intended to deprive American citizens of their rights in the manner suggested by the appellant.
■ Patents are not granted solely to reward the inventor. It is through rewarding him that the public is benefited, and undoubtedly it was *821the improvement to tlie arts that motivated the framers of the constitutional and statutory patent provisions. Until appellant in this case filed an application for a patent here or elsewhere, or published it to the world, in wljat way had he contributed to the accomplishment of the purposes of the law? Mr. Justice Holmes, speaking for the court in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U. S. 390, expressed the thought this way:
In view of the gain to the public that the patent laws mean to secure we assume for purposes of decision that it would have been no bar to Whitford’s patent if Clifford had written out his prior description and kept it in his portfolio uncommunicated to anyone.
It is well settled in patent law that a patent does not always go to the first inventor. He must be the first inventor within the spirit of the patent law. In the celebrated case of Mason v. Hepburn, 13 App. D. C. 86, Mason was the first inventor in fact, but was held not to be in law for the reason that he did not first give the American public the benefit of his invention. The correctness of the holding in Mason v. Hepburn to the effect that the term “Any person who has invented [etc.]” does not necessarily mean the first inventor, even though he could prove his priority beyond controversy, has received universal approval in every court where the question there involved has been raised. First inventors may lose their right to patents where they do not bring themselves within the spirit of the patent law by promoting its purposes and aims. They may lose their right because of their inequitable conduct. See Blackford v. Wilder, 28 App. D. C. 535; Miller v. Hayman, 18 C. C. P. A. (Patents) 848, 46 F. (2d) 188. The court in Mason v. Hepburn, supra, read into section 4886 a provision that was not, but which might well have been, inserted by Congress, and I know of no logical reason why this court is not now justified in upholding the Patent Office in its interpretation of what Congress intended in connection with the subject matter at bar.
It is not my purpose here to belabor the issue relating to long-continued administrative practice. It is sufficient here to say that since the rule has been universally and satisfactorily applied for more than half a century, the question should receive very careful consideration.
For reasons hereinbefore stated, I think that the decision of the Board of Appeals, affirming that of the Primary Examiner in denying appellant’s application, should be affirmed.