dissenting.
I am not able to agree with the decision of the majority.
In the interests of convenient reading, I will discuss the facts and the law involved in the F-ebrey case. Febrey filed an application, Serial No. 378,828, January 8, 1941, for Stranded Plug-Type Signal Bond. His assignee was The American Steel and Wire Company. He alleged that application to be a continuation-in-part of an earlier application, Serial No. 232,182, filed September 28, 1938, which was passed to issue July 20, 1940 with two allowed claims. It will be *1061noted that the later application was filed 12 days before the forfeiture date of the original application, January 21, 1941. The tribunals of the Patent Office held that if the continuation application had to rely upon its filing date it was barred by public use, and the issue there was whether or not Febrey should be allowed the filing date of his original application, September 28,1938.
The drawings in both applications were identical except for reference characters. The Primary Examiner held that the only probable new matter in the continuation related to a description of the possible location of certain conductors, and that the new matter added did not materially modify the disclosure of the original, and was not entitled to an effective date prior to its own. The Board of Appeals was of opinion that all of the claims of the continuing application could have been made in the original and regarded the case as falling within the prohibition announced in In re application filed July 10, 1940, 1941 C. D. 12, 49 USPQ 566, and therefore that the application was barred by public use.
Upon appeal here, appellant’s counsel stated in his brief that he did not urge that the second filed application was a continuation-in-part, although he said he was willing to have it so determined if it were deemed necessary.
In our decision the second application was considered as an ordinary continuation and no discussion was deemed necessary concerning a possible difference in character between it and a continuation-in-part. In our decision in the Febrey case we held that by repealing the renewal statute, Section 4897 B,. S., on August 9,1939, Congress merely denied an applicant the right to file a renewal application after the previously filed application had become forfeited, and that the said repeal did not apply with respect to applications, even though they had been allowed, if they had not been forfeited.
We pointed out that the right to amend, appellant’s original application expired only because of the rules of the Patent Office, and, in my opinion, relied heavily upon the doctrine announced in the case of Godfrey v. Eames, 68 U. S. 317 (1863).
Upon further consideration I think that our decision in the Febrey case should be overruled.
Nowhere at any time has there appeared in the patent statutes any provision for continuing the life of an application, or for a resuscitation thereof, except in Section 4897 and the statutes relating to abandonment, which latter I do not discuss here. The first judicial approval of such practice was announced in the case of Godfrey v. Eames, supra. Under the statutes in effect then there was no limit on the time within which an applicant had to answer rulings of the Patent Office. .Therefore it is not difficult to understand why an *1062applicant tinder the facts of that case should have been given the benefit of the date of his earlier application. Godfrey was a patentee who brought suit for infringement against Eames. In his answer Eames alleged the invalidity of the Godfrey patent based on lack of continuity of prosecution. It appears that Godfrey filed his first application for a patent for boot-trees January 31, 1855. It was rejected for want of novelty. On April 24, 1857, Godfrey submitted a new application, simultaneously withdrawing the old one.
It will be noted that the original Godfrey application had been rejected. In the Febrey case the original application had been allowed. I think this difference between the facts in the Godfrey case and those in the Febrey case renders the former inapplicable as a precedent in the latter.
A careful review of all the decisions in which the Godfrey case has been cited reveals that in only one was the continuing application filed while the original application was allowed. Clark Blade & Razor Co. v. Gillette Safety Razor Co., 194 F. 421, affirming 187 F. 149. It should be remembered that neither Section 4897 nor anything comparable thereto was in existence when the Godfrey case arose, but that section was the law when the Clark Blade cfi Razor Co. case arose.
From the enactment of Section 4897 until its repeal an applicant was entitled to resuscitate his application. In none of the cases have I found that after the statutory time for renewal had expired was an applicant permitted to again file any kind of application whatsoever-giving him the benefit of an earlier date. This rule was positively announced in Weston Electrical Instrument Co. v. Empire Electrical Instrument Co., 136 F. 599, and in Barrett v. Hart, 1918 C. D. 62, 256 O. G. 224.
Assuming for the sake of discussion that the decision in the Godfrey case was based on a set of facts similar to those in the Febrey case, I would point out that subsequent to the decision in the former case Rule 78, substantially as it appears today, was made by the Commissioner in 1879, under authority of law given him by Section 19 of the Act of July 8, 1870, 16 Stat. L. 200. That rule has the force and effect of law and therefore superseded the law of the Godfrey case insofar as it would have permitted Godfrey to file a continuation application after his case had been allowed.
All continuations broadly are to be considered amendments of a. former application. All changes in either specification or claims do nothing more than enlarge or restrict the scope of the prior application, and as such amend it.
The right to file a continuation after the allowance of the original application must be based either on the right to amend the original or on the right to renew the original.
*1063Rule 78 specifically states that amendments will not be permitted in the original application as a matter of right after the notice of allowance. Although the specific point has never been decided, that prohibition is broad enough to forbid the filing of a continuation application as a matter of right after the notice of allowance in the original.
It has been decided, in the Weston Electrical Instrument case and in the Barrett case, both supra, that any application, filed after the right to renew the original application had expired, could not be given, the benefit of the filing date of the original. The latter case was in effect a holding that the right to file a continuation after the notice-of allowance had issued in the original was dependent upon the right, to renew the original.
That was the situation which confronted Congress at the time it. was dealing with the repeal of Section 4897. On the one hand it had the provisions of Rule 78, which are broad enough to forbid the filing of a continuation after allowance of the original, and on the other hand it had a decision of the Second Circuit Court of Appeals, the-Weston Electrical Instrument case supra, and a decision of the Commissioner of Patents, the Barrett case supra, that the right to file a. renewal or a continuation, after the allowance of the original, expired after the right to renew the original expired. Relying upon those-facts Congress had the right to assume that the repeal of the renewal statute would abolish the filing of all continuations after the notice-of allowance had been mailed in the original.
When Congress repealed Section 4897 it clearly had in mind the great necessity of prompt and persistent prosecution of applications-through to patent. It is interesting to note that the repealer was one of a series of five bills designed to expedite the issuance of patents. They were introduced in the House of Representatives on the same day, reported from the Committee on Patents on two successive days, passed by the House of Representatives on the same day, reported by the Senate Committe on Patents the same dajr, passed by that body on the same day, and signed within four days of each other.
One of those acts reduced the time within which an applicant must file his application before the statutory bars operate to forbid the issuance of a patent on the invention from two years to one, 53 Stat. L. 212, chap. 450. The Senate Committee Report (76th Congress, 1st Session, Report No. 876) states:
In 1839, when the period of 2 years was first adopted, it may have been a proper-length of time for an inventor to make up his mind whether or not to file an application for patent. Under present conditions 2 years appears unduly, long and operates as a handicap to industry. Reduction of the period would serve to bring the date of patenting closer to the time when the invention is made, and would expedite applications, not only in their filing but also in their progress through the Patent Office.
*1064The second act abolished the appeal from the Examiner of Interferences to the Board of Appeals and substituted original and final determination of interferences in the Patent Office by a Board of Interference Examiners. The Senate Committee Report (76th Congress, 1st Session, Report No. 877) states: “The purpose of this bill is to shorten and simplify interference contests in the Patent Office by eliminating one of the two or more appeals now permitted.”
The third act provided that an applicant wishing to copy the claims of an issued patent for the purpose of interference must do so within one year of the date the patent was granted. The Senate Committee Report (76th Congress, 1st Session, Report No. 880) states: “The purpose of this bill is to curtail the time within which an interference with an issued patent may be instituted.”
The fourth act authorized the commissioner to require a response to ah office action in less than the statutory period of six months under certain circumstances. The Senate Committee Report (76th Congress, 1st Session, Report No. 879) states:
This is a bill to give the Commissioner of Patents authority to set times within which replies to communications from the Patent Office must be made by applicants for patents.
Under the present law, an applicant for patent is allowed 6 months within which to reply to any action taken by the Patent Office, regardless of the nature of the action or of the condition of the application and the running of the period is beyond the control of the Patent Office. If the Patent Office writes a letter requiring, for example, a single correction to the drawing or some other small correction, the applicant need not reply for 6 months. The response by the applicant may introduce other matters requiring another letter, and another 6 months for reply, and so on. The work of the Patent Office could be expedited considerably, to the benefit of the public, if the Commissioner of Patents had the power to fix a period of less than 6 months in cases requiring a shorter time; for example, in’ cases which have been pending a long time, in cases which interfere with each other, in cases requiring only minor corrections, and the like.
Finally, the Act of August 9, 1939, 53 Stat. L. 1293, abolished the renewal statute but amended Section 4885 to authorize the commissioner in his discretion to accept the final fee if paid within one year after the application became forfeited. The Senate Committee Report on that act (76th Congress, 1st Session, Report No. 878) states:
The original intent of this [renewal] procedure was to provide for issuing the patent when the time for payment of the final fee has been permitted to lapse through accident or unavoidable delay. Considered as a means for permitting the payment of a fee after it first falls due, the procedure is remarkably involved. It readily permits the deliberate postponement of the issuance of a patent and is resorted to mainly for this purpose, since additional matters may be deliberately introduced to cause further delays in reexaminations.
The proposed change eliminates renewals, consequently simplifying the practice and abolishing causes and opportunities for delays. In place thereof the bill provides simply that the fee may be accepted late, and the patent issued, in the discretion of the Commissioner, upon the payment of a small additional fee. *1065The original intent of the statute is. preserved and the procedure simplified, yet at the same time the opportunities -for abuse are removed,.
Earlier issuance of the patent is assured by this bill which merely forecloses opportunities for deliberate delay. * * * [Italics mine.]
There can be no doubt therefore that Congress was entirely concerned with the expeditious patenting of inventions so that the 17 year period would begin to run without unreasonable delay. Under the well-known rule of statutory construction, that statutes in pari materia must be construed together, United States v. Stewart, 311U. S. 60,1 think it is proper to consider all of those acts in seeking the intent of Congress, and when so considered I am led to the definite conclusion that Congress intended nothing less in the repeal of Section 4897 than to render it impossible for applicants to prosecute their applications in the Patent Office indefinitely.
' I am of the opinion that the decision of the Commissioner of Patents in In re application filed July 10, 1940, 1941 C. D. 12, 49 USPQ 566, decided May 5, 1941, gives a correct exposition of the application of the patent laws with respect to continuations subsequent to the repeal of the renewal statute.
It may be argued that the overruling of the Febrey case will do away with a long-continued practice of the Patent Office in permitting continuation applications to be filed subsequent to allowance of the original. I do not think this argument is of any substance.
Under the doctrine of the Febrey case an applicant is permitted to keep his application alive indefinitely without there being any time limitation such as was provided in Section 4897. This clearly nullifies the effect of that repeal, and in fact gives much greater opportunity to continue over an indefinite period the life of the application, thereby unconscionably delaying the monopoly period, and defeating the expressed purpose of Congress. As pointed out in the brief of the Solicitor in the Febrey case, the affirming of the Board of Appeals there might “require more careful preparation of applications and more careful prosecution thereof, but that is all.”
It may be further noted that the repeal of Section 4897 B,. S. does not preclude an applicant from filing a second application for the same invention if the invention has not been disclosed by public use or publication or foreign patenting more than one year prior to the second application.
The situation in which Febrey found himself was undoubtedly unfortunate, but was not occasioned by any statute or rule of the Patent Office. If it had been necessary there for the applicant to protect his invention, it seems to me that the reason for such protection would have been apparent in the exercise of proper attention and diligence during the prosecution of the case before allowance. It might well be that an applicant, by following the same course as was *1066pursued in the Febrey case, could keep a “sleeper” alive indefinitely., and thus unduly delay the patent monopoly.
For the reasons above stated, I am of opinion that the decision in the Febrey case should be overruled.
Appellee contends that his second application is proper in that it is a continuation-in-part of his earlier application by reason of the commissioner’s ruling prior to the Febrey decision, referring to In re application filed April 17, 1941 C. D. 14, 51 USPQ 80, decided July 16, 1941. I cannot agree with the doctrine there announced. The formal allowance of an application by the Patent Office is a holding by it that the patent which is granted on it is valid. Consequently a continuation-in-part is as much of a device for delaying the issuance of a patent as is a continuation, and in my opinion both are subject to the same rule. Proper attention given to the drafting of specifications and claims in an application by reasonably diligent and skillful counsel would certainly reveal to him before allowance the scope of the necessary protection. That certainly must be considered as particularly true where organizations such as the assignees here, and also the assignee in the Febrey case, may be deemed to take to themselves every proper possible advantage of patentable improvements in their business. The patent of the appellants here is assigned to the Westinghouse Electric and Manufacturing Company, and the application of appellee to the General Electric Company.
I am of the opinion that the decision of the Board of Interference Examiners should be reversed, and priority of invention should be awarded to appellants.