(dissenting).
I must respectfully dissent from the decision of the majority reversing the decision of the Board of Appeals and holding that Eitzen was estopped to make the claims because of the fact that he did not present them under rule 109 in one of two former interferences.
It is not my purpose to here discuss at any great length my chief reasons for believing that the majority opinion is unsound since those views are in great detail stated in the dissenting opinion of Presiding Judge Garrett and myself in Avery v. Chase, 101 F.2d 205, 26 C.C.P.A., Patents, -. We took the position there, and I take the position here, that the application of the doctrine of estoppel in Avery v. Chase, supra, was wholly unwarranted and was the extension of an unpopular doctrine which this court has strongly intimated (Jenks v. Knight, 90 F.2d 654, 24 C.C.P.A., Patents, 1227,) it was not in favor of extending.
It was pointed out in our dissenting opinion in the Avery v. Chase case that rule 109, when adopted, was a permissive rule and when the doctrine was first applied in connection with failure to bring forward a claim under the rule it was based upon the ground of res judicata — that is, what had actually been adjudicated. Later, the doctrine was modified and extended to include a so-called equitable estoppel, which had for its basis estoppel in pais. In that' respect the doctrine was similar to that applied in Mason v. Hepburn, 13 App.D.C. 86. At later dates it was held that not only did estoppel apply where the matter had been adjudicated as it was in Blackford v. Wilder, 28 App.D.C. 535 (the first case on the question), but that it applied to all subject matter that could have been adjudicated in an interference. Subsequently, it was extended to a holding that it would apply when the issue could not have been adjudicated in a particular interference if the claims were not brought forward so as to bring about the declaration of another interference in which the issue could have been adjudicated.
*525But no case goes as far as the majority has gone in this case where during the motion period of the prior interferences the subject matter of the disputed counts had been held unpatentable to the party against whom the estoppel is sought. The majority opinion states: “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 last opinion of the board indicates that it was of the view that the instant issue could not have been tried in either of the prior interferences and that the declaration of another interference such as the instant one would have been necessary. The appellee argues that the instant issue could not have been tried without the declaration of an additional interference.
No reason has been called to my attention why, if the claims corresponding to the instant counts, had been allowed they could not have been presented and the issue adjudicated in the prior interference in which appellants and appellee were the sole parties. But, it is clear that in the prior interference in which Decker was a party, even though there was a common assignee for the Decker and Eitzen applications, the instant issue could not have been tried and a separate interference would have been declared. This, I think, is the well-settled practice in the Patent Office. In any event, if the claims had stood allowed and had been brought forward under rule 109 in either interference, additional preliminary statements would have been required since the subject matter of the claims being contested in the prior interference forms no part of the present issue.
While in In re Chase, 71 F.2d 178, 21 C.C.P.A., Patents, 1183; In re Long, 83 F.2d 458, 23 C.C.P.A., Patents, 1078; Jenks v. Knight, supra, and International Cellucotton Products Co. v. Coe, 66 App.D.C. 248, 85 F.2d 869, by reason of special circumstances, not necessary to discuss here, the doctrine of estoppel was not applied, in several other cases of this court, such as In re Austin, 40 F.2d 756, 17 C.C.P.A., Patents, 1202, and In re Shimer, 69 F.2d 556, 21 C.C.P.A., Patents, 979, the doctrine was greatly extended and the language in some of these decisions indicates to me that it was extended much further than was proper.
Obviously, if there is any right to apply a doctrine of estoppel for failure to come forward under rule 109 it is based upon the theory, or should be at least, that a party to an interference ought not to be permitted to conceal inventions of which his opponent is not apprised and avoid an interference at a time when he should seek to show his priority and then later be allowed the claims, the invention of which, under ordinary circumstances was first made by another.
As I shall hereinafter point out, based upon facts, some of which are not cited or discussed by the majority, Eitzen, on this record, has never stood in the position of concealing anything or attempting to avoid an interference for the purpose of avoiding the trial of an issue which he might lose.
To my mind, the facts in this case recited by the majority suggest, too plainly to call for extended argument, that no kind of estoppel known to the law can properly be imposed against Eitzen. It seems unusually clear that to impose the doctrine under the circumstances of this case is a radical, unwise and unsound extension of a doctrine which needs restriction rather than extension. As I pointed out in Avery v. Chase, supra [101 F.2d 216], in order to get away from the mischief that the extension of the estoppel doctrine was bringing about' — results “not consistent with the doctrines of equity upon which it rests” — the Patent Office at the solicitation of the Secretary of Commerce has adopted rule 116. In the case at bar the Board of Appeals has refused to extend the doctrine by saying in substance what might have been put in a rule similar to rule 116. Its reason for not applying estoppel in this case was based upon the fact that the alleged conception date of Dirkes et al. was subsequent to the filing date of the Eitzen application and that Eitzen should not be estopped for not bringing forward claims when Dirkes et al. stood under order to show cause.
I took the position in Avery v. Chase, supra, that the Patent Office had no right to say by rule when estoppel applies and when it does not apply. If the party stood estopped in law, the Patent Office by rule might give notice that it would not apply it under certain circumstances but that if it existed at all its effect could not be avoided by the mere promulgation of a rule. It seems to me that, if restriction rather than extension of the rule is desired, there is *526about as much logic in declining to apply the doctrine of estoppel to a senior party when the junior party stands under order to show cause as there is under the circumstances outlined in rule 116. The courts announced, before the adoption of rule 116, that it did apply under the circumstances recited in the rule. See In re Alexanderson, 69 F.2d 541, 21 C.C.P.A., Patents, 983.
It must be conceded that by further extending certain court decisions, as was done in Avery v. Chase, supra, a case of estoppel may be spelled out against a senior party even though by virtue of the record dates the junior .party is under order to show cause, but it is obvious to me why the Patent Office has taken the course it has in the instant proceeding, and in Ex parte Johnson, 20 Patent Quarterly 284. The patent profession, the Secretary of Commerce, and obviously the Patent Office itself became alarmed at the results of the gradual extension of the doctrine which, in so many instances, was depriving the first inventor of his legal rights upon insufficient grounds.
Regardless of all that may be said in favor of the refusal of the Patent Office to apply the doctrine as against a senior party when the junior party stood under order to -show cáuse, I think it is sufficient for my .purposes here to point out that no case in the Patent Office or the courts has ever definitely held to the contrary. This, to my mind, warrants the conclusion that the holding of the majority goes beyond any decided case, and therefore is an extension of this most unpopular doctrine.
My chief reason for believing that it is erroneous to apply the doctrine to 'Eitzen is because under rule 95 and rule 93, common patentable subject matter must be found to be claimed in the applications involved before any interference may be declared. One is required to bring forward claims for the purpose of getting into an interference. But, where the rules provide that there shall be no interference until common patentable subject matter is found to exist, and it is definitely held by the Primary Examiner that there is no such common allowable subject matter, how can it logically be held that it is the duty of such an applicant to bring forward his disallowed claims. Eitr zen upon seeing the Dirkes et. al. patent immediately claimed the subject matter. He did not try to avoid an interference. He sought an interference when he copied the claims at a time .-when there wa.s no .other interference he could get into. .He told the Patent Office he was copying them for the purpose of. interference and requested such an interference before the other interferences were declared. The Patent Office considered the claims with .the right to an interference in view, and when he had won the claims the Patent Office, as it had the discretionary authority to do, declared the interference. When he copied the claims he pointed out that it was the duty of the Patent Office to have previously declared an interference between Dirkes et al. and the claims of his allowed patent which covered the Dirkes et al. application.
In view of the attitude of the Patent Office and of the particular circumstances of this case, it seems clear to me that it is inequitable to bar Eitzen because he did not bring forward claims when no trial of the issue of priority could have resulted. Under the circumstances did not he properly rely upon the clearly justifiable belief that if he won his ex parte proceeding he would be entitled to win priority in an interference to be declared. The Patent Office kept faith with him. When the claims were allowed they declared the interference as they should have done and were expected to do. Is it to be held now that the Patent Office exceeded its authority and that the first inventor in fact (and I think in law) is to be penalized for not doing a futile, and unnecessary thing in bringing forward claims when an interference trial as to priority could not have resulted?
The majority admits that Eitzen, when he appealed ex parte did the only thing he could do to protect his rights. He availed himself of a right granted by statute. It is suggested that it is the practice of the Patent Office, when interference proceedings are instituted involving claims on ex- parte appeal, to suspend the ex parte appeal until final decision in the interference proceedings. Whether there is warrant in law for depriving a party of his right to an ex parte appeal in this manner I need not discuss here, but I feel certain that those winning their appeals under such circumstances should not be deprived of the fruits of their victory in the manner suggested by the majority.
Concededly, Eitzen and the Patent Office both proceeded upon the theory, as happens in numerous like proceedings, that if the party appealing won his ex parte appeal, he would have the opportunity of trying out priority in an inte. ference to be declared. The Patent Office knew his al*527lowed patent claimed broadly the subject matter of these counts. It knew the two other interferences were proceeding when his ex parte appeal was decided. It did not apply the doctrine of estoppel then as the majority holds in effect it should have done.
As to the effect of Eitzen’s ex parte appeal, I think it is well to remember what was said by the Supreme Court in Chapman et al. v. Wintroath, 252 U.S. 126, 137, 40 S.Ct. 234, 236, 64 L.Ed. 491, quoting from the earlier-decided case of United States v. American Bell Telephone Co., 167 U.S. 224, 247, 17 S.Ct. 809, 42 L.Ed. 144: “A party seeking a right under the patent statutes may avail himself of all their provisions, and the courts may not deny him the benefit of a single one. These are questions not of natural but’ of purely statutory right. Congress, instead of fixing seventeen, had the power to fix 30 years as the life of a patent. No court can disregard any statutory provisions in respect to these matters on the ground that in its judgment they are unwise or prejudicial to the interests of the public.”
Unquestionably, upon the instant record Eitzen is the first inventor of the subject matter of the pending counts. Has he done anything in law to warrant its being taken away from him by judicial fiat? Is the doctrine of estoppel to be extended in cases like this where the tribunals divide upon the question of the right to apply it and where the question is so doubtful that the Board of Appeals reverses itself upon reconsideration? What kind of diligence and foresight must a party litigant have in order to keep up with the swift and dangerous development of this unpopular doctrine? In Avery v. Chase, supra, it was sufficiently far-fetched to apply the doctrine against a party who clearly came forward and showed he was the first inventor in a separate interference set up by the Patent Office tribunals for the very purpose of determining priority between him and his adversary, but in the instant case the majority is going even further than in that case and holding that it is his duty to bring forward claims in interferences which were declared after he had been told by the Primary Examiner that he could not possibly have them, notwithstanding the fact that during the motion period he was vigorously contesting in an ex parte appeal his right to have the claims for the purpose of an interference. This, to my way of thinking, is running -wild with the doctrine of estoppel.
Some of the decisions, like In re Shinier, supra, stress the point that the doctrine is a wholesome one because it prevents the multiplicity of proceedings and appeals. Eitzen had taken one appeal when he had the right to take it before any interference had been declared. If he had presented the claims at the time the majority stated, of course no interference would have been declared on these claims and since he had already been to the expense of preparing a record for appeal in the ex parte case, it is not seen how the undue multiplicity of litigation argument applies in the instant case. Moreover, if upon the ex parte appeal the examiner’s rejection of the claims had been affirmed, no further litigation would have been necessary.
In this case, Eitzen (or his assignee) won the two prior interferences and as the senior party, under the practice in the Patent Office he is entitled to have allowed to him all common subject matter in the two applications. It must be remembered that in Eitzen’s patent No. 1,822,769, of September 8, 1931, of which Dirkes et al. must have had full knowledge in view of its citation as prior art in the Dirkes et al. application, he had claims broad enough to cover the Dirkes et al. disclosure. The examiner in the record before us definitely held after going into the matter with great care, that the Eitzen patent covered broadly the invention disclosed in the Dirkes et al. patent. He pointed out where the counts at bar are more limited than the claims of the Eitzen patent. After Eitzen had been granted a patent for the broad subject matter of the Dirkes et al. application and after he had won two interferences as the senior party upon the clear showing that his application filing date was prior to any claimed date by Dirkes et al., and after he took an appeal ex parte and was allowed the claims in issue, is it possible that upon any equitable theory he can be estopped from claiming the matter in the present proceeding?
The fact that when the two interferences were declared Eitzen had been granted a patent, of which Dirkes et al. had full knowledge, containing claims broad enough to cover the Dirkes et al. application, seems to me to be an important consideration, which evidently is not so regarded by the majority since no mention is made of the matter. It is because of these facts that Eitzen here urges the pertinency of the decision of this court in Jenks v. Knight, su*528pra, and the decision of the Court of Appeals of the District of Columbia in Chapman v. Beede, 54 App.D.C. 209, 296 F. 956, where estoppel was not declared against a party for the sole reason that he had from the beginning broadly claimed the invention. It is true that in those cases the rule with reference to copying claims after more than two years had elapsed was involved. It seems wholly unjustifiable to hold Eitzen estopped because of his failure to claim something in an interference, where he had no allowable subject matter, when he had always claimed the broad invention and been allowed a patent for it. According to the holding of the examiner, Dirkes et al., must have known at the time they were in the two losing interference contests with Eitzen that Eitzen had claimed and been allowed in his issued patent subject matter which covered the Dirkes et al. application. What responsibility under such circumstances was Dirkes et al. placed under?
So, in summing up it seems to me that estoppel does not apply either on the basis of res judicata or estoppel in pais nor can it apply on account of the failure to comply with rule 109 since there was a definite holding that there was no allowable common subject matter at the time the majority says Eitzen stood estopped. No case involving facts comparable to those at bar has been cited by the majority and to my way of thinking the board’s decision was sound and should not be reversed.
GARRETT, Presiding Judge, joins in the foregoing dissent.