Harder v. Hayward

O’Connell, Judge,

dissenting.

Appellants prosecute this appeal on the theory that the decision of this Court in In re Febrey, 30 C. C. P. A. (Patents) 1099, 135 F. (2d) 751, 57 USPQ 407, was an erroneous decision which must be overruled together with the decision of the Board of Interference Examiners herein based on the citation of that case.

In sweeping aside the rules of the Patent Office as not applicable to the amendment of a pending application by the filing of a continuing application, the Court in the instant case perpetuates the doctrine of the Febrey case.

We cannot shut our eyes to the consequence of the decision in the Febrey case which was to nullify the substantial benefits to the public by reason of the repeal of Section 4897, R. S., and its replacement by a simplified procedure, which was brought about on the recommendation made by the Commissioner of Patents when he was called upon by the Temporary National Economic Committee for suggestions to improve the patent laws. The plan also had the approval of the Department of Commerce, the Patent Office Advisory Committee to *1067the Secretary of Commerce, and the indorsement of patent law and "other organizations. Report of the Senate Committee, 76th Congress, First Session, No. 878.

• The question of law in this case relates to the right of the party Hayward to have his second application, which is involved in the interference, treated as a continuation of the proceeding instituted by the filing of his first application which was allowed, but not forfeited, before his second application was filed.

The Court in reaching its decision is called upon to determine the procedure under the Rules of Practice in the United States Patent Office relative to the filing of a continuing application after notice of allowance and to decide what change, if any, was effected in such procedure by the repeal of Section 4897 and the amendment of Section 4885 of the Revised Statutes.

Without recourse to a retrospective analysis of the Patent Laws, it may be observed, in general, that in making an application for a patent, an inventor is required to file a written description of his invention in such full,vclear, concise, and exact terms as to enable not only a person skilled in the art to make use of the invention; but also to enable the personnel of the Patent Office and others to distinguish the invention from other inventions. Sec. 4888, R. S. (U. S. C. title 35, sec. 33).

After a person has filed such an application, he may either persist in its prosecution and obtain a patent; or he may abandon the application, actually or constructively, in which event no patent will issue. In persisting in its prosecution, an applicant may be required to amend his application either to correct a mistake in the application, or to avoid interference with other inventions. This amendment may be -effected by a line and page correction of the papers themselves; or it may be effected by the process of filing a second, or substituted, application for the same invention. In effecting the amendment by either process, with diligence, the filing date of the original unabandoned .application is continued and preserved.

The second, or substituted, application, used by an applicant in effecting the amendment of his pending application, was given no name in the text of the Patent Laws; but in the infancy of the procedure of the Patent Office, it was christened, in effect, by a decision of the Supreme Court of the United States, and has been known and .employed from that day to this as a “Continuing” application. See, Godfrey v. Eames, 68 U. S. 317; Ex parte Hall, 1920 C. D. 56; In re Roberts, 49 App. D. C. 250, 263 Fed. 646; In re Application Filed April 17, 1910, 51 USPQ 80.

The right to amend and prosecute a pending application after notice of allowance is indirectly authorized under the collective provi*1068sions of Sections 4885, 4886, and 4888 of the Revised Statutes (U. S. C. title 35, secs. 41, 31, and 33), and under the respective provisions of Rules 78 and 165 of the Rules of Practice in the United States Patent Office. Such rules are made by the Commissioner of Patents for the conduct of proceedings in the Patent Office under the authority conferred upon him by Section 483, R. S. (U. S. C. title 35, sec. 39), and, unless it is disclosed that the involved rules are inconsistent with the statutes from which they are derived, they must be observed because they have the force and operation of law. Broadwell v. Long, 36 App. D. C. 418. Por example, under Rule 68, this Court has sustained the Commissioner of Patents in rejecting an amendment of an application for failure on the part of an applicant to show a good and sufficient reason why such amendment was not earlier presented. In re Wait, 22 C. C. P. A. (Patents) 822, 73 F. (2d) 982, 24 USPQ 88.

Under Rule 78, supra, an amendment after notice of allowance may be made, if the specification has not been printed, by an applicant without withdrawing the application from issue to correct a mistake in the application which does not require a new examination of the application on its merits. See, Ex parte Goldsmith and Whiting, 1912 C. D. 350; Ex parte Stone, 1902 C. D. 434, 435. If the amendment require such an examination, however, it cannot be made unless the application is withdrawn from issue under the provisions of Rule 165, supra. See, Ex parte Bryant, 1902 C. D. 334, 336; Ex pwrte Meyer, 1907 C. D. 289, 290. In either event, an amendment after notice of allowance will not be permitted as a matter of right, but may be made only by an order of the Commissioner of Patents based upon a proper showing of good and sufficient reasons for the exercise of his supervisory authority.

For example, “It sometimes occurs that public use has intervened, or some other circumstances which render it practically impossible for an applicant to successfully prosecute a new application, and whenever this fact appears the Office with equal uniformity allows the application to be withdrawn from issue and amended. In the present case there was no such showing, and the Commissioner had nothing before him which would justify a departure, from well-established practice.” Ex parte Page, 1888 C. D. 63, 64.

In the case of Ex parte Babsiler, 1911 C. D. 126, 127, the Commissioner of Patents held:

It is well settled that an application will not be withdrawn from issue for the purpose of further prosecuting the same in the absence of a showing that some error has been committed upon the part of the Office or that the failure to present a case in proper form was due to mistake upon the part of the applicant or his attorney and that due diligence has been used in discovering such mistake [and correcting it].’

*1069An applicant for a patent shall pay the final fee not later than six months after notice of allowance; and if the final fee is not paid within that period, the patent shall be withheld and forfeited under the pro-. visions of Section 4885, sufra, and Rule 174 of the Rules of Practice in the United States Patent Office.

Section 4897 expressly authorized the filing of a renewal application, as a matter of right, to restore a forfeited application to the status of ail original application; provided that the renewal application was filed within six months after forfeiture of the original application. . The clear intent of Congress as expressed in the statute and in its legislative history was to provide a remedy for an inventor whose application was permitted to lapse and become forfeited through accident or unavoidable delay.

In other words, a continuing application was the proper procedure to be employed to amend a pending application after notice of allowance which required a new examination of the application on the merits; while a renewal application, or petition, was the proper procedure to be employed to renew a forfeited application. This distinctive use of the respective applications was employed and enforced under the Rules of Practice in the United States Patent Office. See Ex farte Manny, 1888 C. D. 106; Ex farte Schultz, 1904 C. D. 366; Ex farte Nicholson, 1890 C. D. 112, Ex parte Meyer, supra.

In 1925, however, the Commissioner of Patents diverted the intent and operation of the law by holding that Section 4897 was a remedial statute which did not prohibit any person therein specified from waiving the limitation of time provided for in Section 4885, supra, for payment of the final fee; and that any such person had a right any time after the notice of allowance, and prior to forfeiture, to file a renewal application to amend a pending application.' Ex parte Buehler, 1925 C. D. 24. To carry the decision into effect, the commissioner amended Rule 175 of the Rules of Practice in the United States Patent Office to provide that a renewal application could be filed “any time after the case is allowed and such renewal will be taken as a waiver of the right to pay the final fee.” Order No. 2,911, 335 O. G. 5. However, in amending Rule 175, the Commissioner of Patents did not abolish or amend Rules 78 and 165, supra, which authorize the employment of a continuing application to amend a pending application after notice of allowance.

As a result of the decision in the Buehler case and the amendment of Rule 175, the use of the renewal application and the continuing application were coexisting remedies for the amendment of a pending application after notice of allowance. This procedure reversed the policy of the. Patent Office which had been in existence for many years, and *1070was one of the sources of the evil which led to the repeal of Section 1897. The root of the evil lay in the practice of filing a renewal ap-. plication, as a matter of right, which, in effect, unjustly deferred and prolonged the time for the issuance of a patent.

How the Patent Office and public were imposed upon through the medium of the renewal application is described by the Commissioner of Patents in these terms:

Amendments are delayed In many instances until the end of the period allowed toy law, and when applications are passed for issue they frequently are forfeited .and renewed with further amendment and their slow prosecution is resumed.
Since a condition constitutes an abuse of the latitude and leniency of the law, .a drag upon and a menace to the progress of the art.
The only possible relief from conditions which have become intolerable is to .force an application to patent or abandonment whenever an opportunity presents itself. The petition (for withdrawal from issue) is denied,.” Ew parte Dyson, ;1916 O. D. 91, 93.

While the legislation was pending before Congress, the Commissioner of Patents made the following statement and recommendation ■regarding the correction of the “intolerable” conditions in his office:

The historic warrant for the renewal procedure was the purpose of affording ¡relief to an applicant who was unable to pay the final fee when this became due. But it is now used frequently by corporations which are quite able to pay the final fee but which resort to the procedure as a device for continuing the prose■cution of their cases. As a safeguard for an inventor who is financially unable to pay the final fee within the statutory period, I propose that the Commissioner •of Patents, upon proper showing, have authority to receive payment of it at a later date. Investigation of Concentration of Economic Power and Searings before ■the Temporary National Economic Committee, Part 3, page 802.

The purpose of Congress in repealing Section 4897 was outlined explicitly in the following brief report by Mr. Danaher of the Committee on Patents of the United States Senate:

The Committee on Patents, to whom was referred the bill (H. R. 6874) to repeal section 4897 of the Revised Statutes (U. S. C., title 35, sec. 38), and amend sections 4885 and 4934 of the Revised Statutes (U. S. C., title 35, secs. 41 and 78), .having considered the same, report favorably thereon with amendments and recommend that the bill as amended to pass.
Under the present law, two fees are required in obtaining a patent; a fee ■when an application for patent is filed in the Patent Office, and a fee for issuing •the patent when the application has been examined and found allowable (called •the final fee). The purpose of the pending measure is to simplify considerably •.the procedure in the payment of the second, or final, fee.
When an application has been examined and found allowable a notice is sent to the applicant, and the final fee of $30 is due within 6 months. If the fee is not paid within this time, the patent is withheld. However, within a further i0 months, a so-called renewal application with a filing fee of $30, may be filed. .(The original papers may be used, however.) This renewal, if additional matters *1071have been introduced, must be reexamined and the prosecution before the Patent Office started all over again. A second notice- of 'allowance is sent when the renewal application is found ready for issue, and the final fee of $30 is due within 6 months after this second notice. '
The original intent of this 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. The 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. The simplification of the procedure is shown by the following tabulation: [Tabulation omitted, the procedure recommended having been enacted in the present statutes] Report of the Senate Committee, supra.

The law as to continuing applications, as hereinbefore stated, was established by the decision of the Supreme Court of the United States in Godfrey v. Eames, supra, decided in 1863, prior to the enactment of Section 4897’ and, as pointed out in the decision of Detroit Iron & Steel Co. v. Carey, 236 Fed. 924, 925, “The rule previous to the statute [Sec. 4897] was well settled that, where an application has not been abandoned, subsequent applications and amendments constitute merely a continuance of the original proceeding.”

Congress, the Commissioner of Patents, and the leaders of the Patents Bar who participated in effecting a repeal of Section 4897 may be presumed to have known of the respective use and existence of both the continuing and renewal applications, and it may be gathered from the foregoing citations that in the repeal of Section 4897, Congress abolished the renewal application, but it did not abolish the continuing application. Furthermore, if it be assumed, as the decisions from time to -time held, that a continuing application was involved in effecting the continuity of a renewal application, then it is obvious that in the repeal of Section 4897, Congress abolished not the use of a continuing-application, but its abuse.

For the reasons hereinbefore stated, it is my opinion that no change in the procedure of the Patent Office relative to the use of a com tinuing application was effected by the repeal of Section 4897 and the amendment of Section 4885 of the Revised Statutes. Such procedure *1072is that after allowance, no amendment may be filed as a matter of right; nor will the examiner have jurisdiction over the application unless by an order of the Commissioner of Patents based upon a showing of good and sufficient reasons for the exercise of his supervisory authority.

Recourse to the record on appeal in the Febrey case discloses that the original application was filed September 28, 1938, and allowed June 20,1940. On January 9,1941, Febrey filed a second application for the purpose- of amending and continuing the prosecution of his original application. At that time, all but a few days of- the six-months period allowed for payment of the 'final fee after notice of allowance had expired; and more than two years and three months had then expired from the date upon which the original application had been filed.

The decision 'of the examiner and the concurring decision of the Board of Appeals held in effect that the claims in Febrey’s second application could have been made in the first application and that the device described in the second application was substantially the same as the device described in the allowed claims of the original application. The board further held that a continuing application, such as Febrey’s second application, was abolished by the repeal of Section 4897, and that the claims of such application were barred by public use and sale. For the reasons stated, Febrey’s second application was rejected by the Patent Office.

This Court in a unanimous decision reversed the action of the Board of Appeals and held that-the repeal of Section 4897 did not affect the right of an applicant to amend and continue the prosecution of an original application by means of a continuing application. With this conclusion, I agree. This Court erroneously held in effect, however, that Febrey could file a continuing application as a matter of right.

In order that the two applications involved in a continuing application may constitute one continuous proceeding under the law, the second application must contain the same invention that is disclosed in the original application. See, Globe Nail Co. v. Superior Nail Co., 27 Fed. 450. The mere fact that the two applications disclose the same invention, however, does not of itself confer the right to amend a pending application. Where the claims of the original application have been allowed and the claims of the second application are the same in effect as the claims that have been allowed and for which a patent is authorized to issue upon payment of the final fee, the right to file the second application will be denied for the reason that it does not constitute an amendment of the original application. Under these *1073circumstances, the applicant is continuously applying for a patent which he has been previously allowed. In other words, the second application cannot be considered as a continuation of the original application because the claims of the second application have been previously allowed and there is nothing to be continued. See, In re Application Filed April 17, 1940, supra.

In the language of the decision in the case of In re Roberts^supra, “It is perhaps unnecessary to add that a party who seeks to correct his own mistake must act with reasonable diligence, and also must assume the burden of establishing his good faith.” In establishing the law as to continuing applications, the Supreme Court of the United States in Godfrey v. Eames, supra, stated, “Both specifications are before us, and it is our duty to construe them.”

The question of Febrey’s diligence in discovering and correcting the mistake in his original application and the question of whether or not the subject matter contained in the claims of the second application constituted a bona, fide amendment of the original application were not considered by this Court. It was the duty of the Court to do so.

For the reasons stated, it is my opinion that the decision in the Febrey case was erroneous and should be overruled.

In the case at bar, appellee, in filing his second application on June 6, 1940, which effected a resumption of the prosecution of his original application, filed December 9, 1937, two and one-half years before, offered no reason whatever why the claims embraced in his second application were not presented in his original application. As pointed out by appellants, so far as the record shows, Hayward’s added improvement in his second application may have been in Hayward’s possession since before he filed his first application, and was omitted for reasons best known to himself; or it may have been an improvement conceived as an afterthought, such as either he or anyone else could have made after the filing of his original application.

Moreover, so far as the issue of the present interference is concerned, the party Hayward has stated that the additional subject matter contained in the broader claims of his second application covers subject matter that is patentable over the subject matter disclosed in his original application.

Under Rule 165, supra, the time for amendment, as a matter of right, expires with the allowance of the application, and therefore Hayward’s second application falls squarely within the law enunciated by the Commissioner of Patents:

No reasons whatever were given, when the first amendment (after allowance) was presented, why the same could not have been presented before the case was
*1074passed to allowance, and therefore there was at that time no reason for withdrawing the ease from issue. Bos parte Orndoff, 1909. C. D. 48, 49.

See also, Ex parte Stuart, 1804 O. D. 484, 486.

For the reasons assigned, the decision of the Board of Interference Examiners should be reversed.