This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming a decision of the Examiner of Interferences awarding priority of invention of the subject matter in issue to appellee Eitzen.
The interference No. 71,872 is between a patent of appellants, No. 1,968,818, dated August 7, 1934, upon an application Serial No. 554,574, filed August 1, 1931, and a reissue application of appellee, Serial No. 745,600, filed September 26, 1934, of patent No. 1,822,769, dated September 8, 1931, upon application Serial No. 357,448, filed April 23, 1929.
Appellants are the junior party. The three counts originated as claims 1, 3 and 5 in the patent of appellants. The interference was declared December 6, 1935.
On January 7, 1935, an interference No. 69,776 was declared between the said patent of appellants and an application of appellee, Serial No. 338,065, filed February 7, 1929, in which interference the single count was claim 2 of the said patent.
There was another interference, No. 69,-956, also declared on January 7, 1935, involving the same patent of appellants and an application of one James W. Decker, Serial No. 253,306, filed February 10, 1928, in which interference the single count was claim 9 of the patent. The applications of Eitzen and Decker, in the said former inter*522Terences, and the application of appellee, Eitzen, in the present interference, are owned or controlled by the same parties in interest.
In both former interferences the preliminary statement of appellants alleged a date of conception subsequent to the filing dates of both Eitzen and Decker and the Examiner of Interferences on February 12, 1935, issued an order to show cause why judgment-on the record should not be entered against Dirkes and Roberts. On March 14, 1935, the last day of the motion period, Dirkes and Roberts filed a .motion to dissolve in each of the said former interferences on the ground that Eitzen and Decker respectively had no right to make the counts in issue.
On May 22, 1935, and May 24, 1935, respectively, the Primary Examiners of Examining Divisions 7 and 16 granted the motions. Upon appeal, the Board of Appeals reversed the decisions of the Primary Examiners on April 8, 1936, and the Examiner of Interferences entered judgment against Dirkes and Roberts on April 13 and 14, 1936, respectively, in both interferences. On May 2, 1936, appeals were taken to the Board of Appeals which, on November 27, 1936, affirmed the decisions of the Examiner of Interferences and awarded priority to Eitzen and Decker respectively.
Dirkes and Roberts then appealed to this court, the record of the said two interferences being consolidated into a single record. The decisions of the Board of Appeals, holding that Eitzen and Decker, respectively, were entitled to make the counts in - issue were affirmed by this Court. Dirkes et al. v. Eitzen and Dirkes et al. v. Decker, 96 F.2d 849, 25 C.C.P.A., Patents, 1176.
From what has heretofore been said, it will be observed that the present interference, declared December 6, 1935, was co-pending in the Patent Office with the two prior interferences until September 16, 1937, the date upon which it was noticed for appeal to this court.
In the instant case, the appellee, desiring an interference, filed his reissue application on September 26, 1934, including therein claims 1, 3 and 5 of the said patent of appellants. The claims forming the counts of the interference were finally rejected in an ex parte proceeding by the examiner November 3, 1934. On December 3, 19.34, appellee appealed to the Board of Ap-. peals. The examiner’s statement was filed December 13, 1934, and on November 5, 1935, the board reversed the decision of the examiner and held that appellee had the right to make the three claims which he had copied from appellant’s patent. Whereupon the present interference was declared.
Appellants, the junior party, did not allege a date of conception in their preliminary statement prior to the filing date of the original application of appellee and the usual order ■ to show cause why priority should not be awarded to appellee was issued against them by the Examiner of Interferences. Thereupon, appellants moved, to dissolve the interference on several grounds, one ground being that appellee was estopped to make the claims by reason of his failure to proceed in one of the said pri- or interferences between the same parties and relating to common patentable subject matter, in accordance with the provisions of Rule 109 of the Patent Office. In view of our conclusion it is not necessary to set out the other grounds upon which the motion was based. Neither is it necessary to set out the counts of the interference.
The motion to dissolve was denied and upon appeal the Board of Appeals reversed the decision of the Primary Examiner on the ground of estoppel under Rule 109, holding as follows: “On the matter of estoppel, it is considered that although Eitzen was prior to Dirkes et al. in his original disclosure of the invention involved, he failed to make a timely motion to incorporate these counts into an interference between the parties during the motion period of the prior interferences in which these parties were involved and that Eitzen is now es-topped to contest the right to these counts with the party Dirkes et al.”
Upon a petition for rehearing on the ground that appellants had been placed under an order to show cause and that in such a case estoppel could not apply the Board of Appeals reversed its former decision and held that estoppel did not lie for the said reason set forth in the petition and awarded priority of invention to appellee. The board then denied the petition of appellants for a rehearing and from its decision awarding priority to appellee this appeal was taken.
Since we are of opinion under the circumstances heretofore set out that appellee is estopped because of his failure to move *523under the provisions of Rule 109, it is not necessary to discuss any other issue of this appeal.
The present reissue application of appellee having heen filed September 26, 1934, was a pending application during the entire motion period of both the said former interferences, the said period expiring on March 14, 1935. Interference No. 69,-776 was between the same parties as is the present proceeding and while interference No. 69,956 was between these appellants and one Decker, the Decker application was owned by the same interests as the Eitzen application.
There can be no question but that the application here and those involved in one or the other prior interferences could have been merged in a single interference proceeding. Since the three applications each took claims from the same patent of appellants there can be no doubt but that the common assignee must have known that after the prior interferences were declared the herein involved application was then pending and deemed that it pertained to common subject matter between the same parties, directly in interference No. 69,776 and indirectly by reason of common ownership in interference No. 69,956.
It is clear to us that under the decisions of this court it was the duty of the common assignee to have amended its application in either of the said former interferences by adding the claims of its instant application in order to avoid the evil of unnecessary litigation that Rule 109 is intended to stop.
The law on this subject was set out by this court in the case of In re Austin, 40 F.2d 756, 759, 17 C.C.P.A., Patents, 1202, 1209, as follows: “* * * it has long been the practice in the Patent Office to require a common assignee, if it desires to raise the issue of priority, to bring into an interference, to which it is a party, all of its applications, patents, and claims which it deems should be made the basis of interference between it and the other parties thereto. Ex parte Temple and Goodrum, decided November 11, 1911, 176 O.G. 526, 1912 C.D. 70; Frickey v. Ogden, 1914 C.D. 19, Vol. 199, O.G. 307. 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. Ex parte Temple and Goodrum, supra; Frickey v. Ogden, supra; The New Departure Manufacturing Co. v. Robinson, 39 App.D.C. 504; In re Capen, 43 App.D.C. 342; In re Wasserfallen, 54 App.D.C. 367, 298 F. 826, 828; Application of Doble, 57 App.D.C. 10, 16 F.2d 350.”
When the Board of Appeals made its decision herein it was without the benefit of our decision in Avery v. Chase, 101 F.2d 205, 26 C.C.P.A., Patents, -. In that case we held that when a party to an interference proceeding fails during the motion period to bring forth claims which should have been determined in the interference he has forfeited his right to claim the subject matter involved, irrespective of the question of priority.
In view of the lengthy and detailed analysis of the pertinent authorities set out in Avery v. Chase, supra, we do not deem it necessary to extend this opinion by a further discussion of estoppel.
We are of opinion that as far as observance of Rule 109 is concerned, in view of our holding in Avery v. Chase, supra, it is immaterial that the junior party was under an order to show cause. The order to show cause is fundamentally a procedural rule and merely requires the junior party to show cause why, upon the record, priority should not be awarded to the senior party. This does not give appellee the right to ignore Rule 109. The case of Ex parte Johnson, 20 Patent Quarterly 284, relied upon by the board in its second decision, is not controlling in the instant case. Indeed we are unable to find in the Johnson case, supra, or any other case, a reason why an order to show cause changes the status of the parties under Rule 109. Neither has any sound reason for such change occurred to us. The object of Rule 109 is to prevent unnecessary and vexatious litigation. The fact that a party is under an order to show cause presents no obstacles to the application of the said rule.
We are not impressed with the contention of appellee to the effect once a finally rejected application has been appealed to the board under Rule 63(d), a subsequent motion under Rule 109 in connection with another interference is prohibited under Rule 95.
There is nothing in the rules of the Patent Office or the statutes which pre*524eludes a party, while in a proceeding under Rule 63(d), from protecting his rights by conforming to the provisions of Rule 109 after an interference has been declared between the parties. It is the purpose of Rule 109 to expedite procedure in interferences and it is the practice of the Patent Office to require the parties to bring in all inter partes controversies in a single proceeding.
It is quite true that on December 3, 1934, when the ex parte appeal of appellee was taken it was the only remedy available to him to protect his rights. No interference had been declared at that time between the parties. However, when the interferences of January 1935 were declared as aforesaid, appellee was certainly of opinion that his claims on ex parte appeal contained common patentable subject matter with the patent of appellants. Otherwise he would not have taken the appeal. Since he was of such opinion it was his duty under the decisions of this court and the practice of the Patent Office to have moved to amend during the motion period which expired March 14, 1935, in accordance with Rule 109. This would not have placed him at a disadvantage for the reason that should his motion to add the claims have been again denied by the examiner he could have taken an appeal in the inter partes proceeding to the Board of Appeals. As we understand the practice* the board would then have deferred action on the ex parte appeal already taken and decide the issues in the inter partes appeal, thereby carrying out the clear intent of Rule 109 of expeditifig litigation and settling all of the issues between the parties in a single proceeding.
If the appellee elects to ignore the possible effect of estoppel in not observing Rule 109 he must be prepared to abide the result. A motion under Rule 109 is not a declaration of interference. It is a proceeding which determines whether or not there is common patentable subject matter, and whether or not the counts proposed should be incorporated in an interference between the parties.
If the contention of appellee were to be affirmed, matters, which could have been considered inter partes might go on as ex parte proceedings with ensuing appeals which involve, as happened here, subsequent, unnecessary inter partes proceedings and place an undue burden on the other, party, the Patent Office and the courts.
For the reasons set forth herein we are convinced that the board should have awarded priority to the junior parties Dirk-es and Roberts. .
The decision of the Board of Appeals is accordingly reversed.
Reversed.