This is an appeal in an interference proceeding wherein the Board of Appeals of the United States Patent Office affirmed a decision of the Examiner of Interferences awarding priority of invention of the subject matter in issue to appellee.
*206The interference is between an application of appellant filed on October 25, 1926, Serial No. 144,034, assigned to the Marchant Calculating Machine Company, and appellee’s application filed on August 17, 1927, Serial No. 213,637, assigned to the Monroe Calculating Machine Company. Appellant is, therefore, the senior party.
The invention relates to improvements in calculating machines. Eleven counts are involved; because of the sole question involved in this appeal it is deemed unnecessary to describe the invention in detail or set forth any of the counts-.
The history of the instant interference is concisely stated in the decision of the Examiner of Interferences herein as follows :
“The present interference was set up as the result of a series of circumstances which will be briefly outlined. On August 13, 1928, Interference No. 57,166 was declared which involved some seven parties including an application of Chase, an application of Friden and the present Avery application. During the motion period certain motions to dissolve and to amend were filed. In a decision dated January 21, 1930, the Law Examiner granted the motion to dissolve and denied a motion to amend which had been presented by Chase, the senior party. This decision was appealed by Chase, which appeal was dismissed by the Board of Appeals on December 8, 1930.
“On October 10, 1930, Interference No. 60,503 was declared by the Primary Examiner between another application of Chase and the same application of Friden. This interference was dissolved on the motion of Friden on the ground that Chase was estopped by virtue of his failure, to bring forward his second application during proceedings in Interference No. 57,166. This decision was upheld by the Board of Appeals but when the claims were rejected on the ground of estoppel he appealed, carrying the question to the Court of Customs and Patent Appeals. In its decision, In re Chase, 71 F.2d 178, 447 O. G. 997, 1934 C.D. 489, the Court reversed the Examiner and the Board, holding that since the second interference had been set up by the Office prior to the termination of the first interference there was no' estoppel against Chase. Accordingly, Interference No. 60,503 was reformed. The present interference resulted from a motion brought in Interference No. 60,503 by the Marchant Calculating Machine Company, the assignee of the Friden and Avery applications.
“When Interference No. 60,503 was reformed the party Friden moved to dissolve on the ground that Chase was estopped. This motion was denied by the Examiner of Interferences who held that the decision of the Court was binding upon the tribunals of the Patent Office even though rendered in an ex parte action. The party Avery has reargued this question of estoppel at final hearing in" this interference. It was pointed out that Interference No. 60,503 was declared some nine months after appeal had been taken in Interference No^ 57,166 which appeal was subsequently dismissed by the Board of Appeals. It was suggested that this fact was not called to the attention of the Court and was urged that this constitutes sufficient basis for ignoring the decision of In re Chase-, supra. This is not believed to be the case-. While there is nothing in the above decision which definitely indicates that the Court took into consideration the nature of the Board’s action in dealing with the appeal in Interference No. 57,166, their decision was of record in the file of Interference No. 57,166, which file appears to have been considered by the Court. The showing which has been made by the party Avery is not considered sufficient to justify the Examiner of Interferences in reaching a conclusion contrary to that expressed in the decision of In re Chase, supra.”
To this statement it should be added that, following the reformation of interference No. 60,503, a motion was made in that proceeding to substitute the application of appellant here involved for the application of Friden. Thereafter, as a result of said motion, the instant interference was declared between Chase, appellee here, and Avery.
Appellee filed a preliminary statement alleging conception of the invention in 1922 and its reduction to practice in 1924 and 1925, and took testimony supporting such dates. Appellant took no testimony and relies upon his filing date, October 25, 1926, for conception and constructive reduction to practice of the invention.
The Examiner of Interferences found that the proofs presented by appellee es*207tablished that he conceived and reduced the invention to practice prior to appellant’s filing date, and that under our decision in the case of In re Chase, 71 F.2d 178, 21 C.C.P.A., Patents, 1183, appellee was not estopped from making the claims corresponding to the counts in issue. He therefore awarded priority of invention to appellee.
Appellant appealed from such decision to the Board of Appeals. The board affirmed the decision of the Examiner of Interferences. In its decision it stated:
“Chase took testimony. Avery chose to rely upon his filing date for constructive reduction to practice. The examiner analyzed the testimonial record presented by Chase and found that the proofs clearly established that he was in full possession of the invention in issue prior to the record dates upon which Avery relies. Although the notice of appeal includes certain items in relation to the holding by the Examiner of Interferences that the party Chase had sustained the burden of proof upon him in his testimonial record, we understand that the merits of this phase of the examiner’s decision is not brought forward for contest here. It appears admitted at the top of page 12 of Avery’s printed brief-before us that this feature is no longer urged.
“Avery now relies upon a contention that Chase should be held estopped from receiving -claims corresponding to the counts. * * * ”
The hoard further stated in said decision that it was in agreement with the conclusion of the Examiner of Interferences that upon the question of estoppel our decision in Re Chase, supra, was controlling and therefore appellee was not estopped from making the claims constituting the counts before us.
From such decision of the board appellant took the appeal before us.
In his reasons for appeal the only issue raised is that of estoppel of appellee to make the claims constituting the counts, and that is the sole question before us.
In our decision in the case of In re Chase, supra, we expressed the opinion that the special facts involved therein made inapplicable the doctrine approved by us in the cases of In re Austin, 40 F.2d 756, 17 C.C.P.A., Patents, 1202, In re Shimer, 69 F.2d 556, 21 C.C.P.A., Patents, 979, and other cases decided by us, and declared in certain cases decided by the Court of Appeals of the District of Columbia. In our decision we stated, 71 F.2d 179:
“Appellant in the case at bar contends that, irrespective of the propriety of applying the doctrine of estoppel in cases similar to those above cited, estoppel, in this instance, should not apply on account of the special facts involved. First it is ui'ged that Friden did not voluntarily attempt to acquire the claims involved, but that the Primary Examiner knowing of Chase’s second application and of the Friden disclosure, sxigge'sted that Friden copy the claims, which was done. After Friden had copied the claims and brought about the interference at the instigation of the Examiner, he made a motion to dissolve oxx the ground that Chase was estopped. Thus Friden moved to dissolve the interference which he had provoked, and which would leave the claims in his possession regardless of his actual priority. It is also pointed out by appellant that, at the time of the declaration of the two-party interference, the seven-party interference had not yet been terminated and that the issues involved in the two-party interference were not the issues involved in the seven-party ixxterference, and that, in order for Friden and Chase to have contested priority of the issues involved in the instant case, the second interference would have been formed in any event. It is urged that, if Chase had broixght forward in tlie seven-party interference his second application and there challenged Friden or any of the other parties who could make the counts (some of them could not), the Examiner would have done exactly what he did do anyway— declare the second interference.
“We think the doctrine of estoppel above announced would apply if the issues ixxvolved here could have been properly sxxggested and decided in the seven-party interference. It seems to be conceded that they could not have been decided there and that the declaration of the second interference was necessary. The declaration of the second interference was the proper procedure for the Patent Office to get the exact issixes between these parties set at one side for the purpose of trial. It seems anomalous to hold that, having set them aside voluntarily while the seven-party interference was going on, Chase *208would be held to be estopped from claiming that which he claimed in his second application.
ft ft ft ft ft ft
“Appellant has argued at considerable length concerning the application generally of. the doctrine of estoppel arising from a failure to proceed under rule 109. It is suggested by appellant that the case of In re Martin, 48 App.D.C. 187, which we discussed in Re Shimer, supra, was in harmony with the other cases of the Court of Appeals of the District of Columbia, and is applicable to the facts at bar. We pointed out in Re Shimer that the doctrine announced in Re Martin, supra, was not in harmony in certain respects with other decisions of the Court of Appeals of the District of Columbia.
“With reference to this contention we think it sufficient to say that we- do not in the least wish to weaken the force of, nor make less applicable, in proper cases, the doctrine of estoppel as announced in the Wasserfallen [54 App.D.C. 367, 298 F. 826], Shimer, and other cases cited, because we think it is of the utmost importance that troublesome, expensive, and sometimes vexatious litigation in the Patent Office should be expedited or avoided. Under the particular facts of the case at bar, we think, however, that the doctrine does not apply, and that the decision of the Board of Appeals affirming the decision of the Examiner in rejecting the claims on the ground of estoppel should be, and it is, reversed.”
Appellant in the case at bar contends that in the case last cited the record was not complete and that this court was misled in its holding that there were special facts involved which prevented the application of the doctrine of estoppel to Chase; that in fact, at the time of the declaration of interference No. 60,503 between Chase and Friden, the seven-party interference, No. 57,166, had been terminated by dissolution, and -that said interference No. 60,-503 was not provoked by Friden but by the' action of the Primary Examiner.
We think it clearly appears from -the record that interference No. 60,503 was initiated by the Primary Examiner. In view of our conclusion, we do not find it necessary to decide whether interference No. 57,166 had been terminated by dissolution at the time interference No. 60,-503 was declared, but we shall assume, as appellee contends, that it had not been terminated.
Appellant insists that our decision in Re Chase, supra, is irreconcilable with our views expressed in the case of In re Shimer, supra, rendered prior to our decision in the Chase Case, and our decision in the case of In re Brashares, 74 F.2d 751, 22 C.C.P.A., Patents, 873, rendered subsequent thereto, and also that said Chase decision is contrary to the rules of law declared by the court in other cited cases, among which is the case of In re Austin, supra.
In the last cited case an application of the appellant in that case and a joint application of the appellant and one MacNeill1 were owned by a common assignee. An interference was declared between, said joint application and the application of one Atwood. While said interference was pending, but long after 'the motion period under rule 109 of the Rules of the United States Patent Office had expired, the said common assignee moved that the interference be reformed by admitting thereto the sole application of Austin. In connection with said motion an affidavit was presented in behalf of the common assignee setting forth reasons. why said motion was not made within the motion period. The Patent Office .tribunals denied said motion, and in an ex parte prosecution by Austin the matter came before us. We held that, the common assignee having failed .to move within the motion period to admit the Austin application, Austin and his assignee were estopped from making claims which might have been adjudicated in that interference. In our decision we stated, 40 F.2d 759:
“ * * * 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. [Citing cases.]
* * * * * *
“It is true, as argued by counsel for appellant, that, at the time the common assignee moved to reform interference No. 51,235 by admitting appellant’s application as to counts 1 and 2 and other claims, the question of priority had not been determined; whereas, in the cases hereinbefore referred to, the issues of priority had been decided. However, the principle announced in the cited cases is applicable *209here, and, if the rules of the Patent Office are to be given any force and effect, this is a proper case for their application, otherwise, the common assignee of several applications could subject an applicant involved in an interference with one of its applications to prolonged, expensive, and vexatious litigation.”
It will be noted that in this case estoppel was based wholly upon failure of appellant to act within the motion period provided by rule 109. The interference had not been terminated when it was sought to add the Austin application to the interference, so that estoppel under the doctrine of res adjudicata was not involved. However, it does appear that, if said motion had been seasonably made, the issues could have been determined in the original interference, while in the case at bar it is conceded that the issues here involved_ could not have been determined in the original seven-party interference, No. 57,166, because all of the parties thereto could not have made the claims here involved.
In the case of In re Shimer, supra, Shimer’s application had been involved in a previous interference involving five parties. Subsequent to the expiration of the motion period in that interference, but while the interference was pending before the Examiner of Interferences, a motion to amend the interference by adding three new counts thereto was brought by the party Shimer. It was conceded that one of the parties to that interference, MacClatchie, could not have made claims corresponding to the counts proposed to be added, and that if Shimer s_ motion to add counts had been granted it would have been necessary to declare another interference excluding MacClatchie _ therefrom. The motion of Shimer was denied because not seasonably filed.
^ In Shimer’s ex parte prosecution of his application the Patent Office rejected certain claims, including those proposed to be added to said interference, upon the ground of estoppel. _ We affirmed such action and in the opinion stated, 69 F.2d 557:
“It is the view of the tribunals and the solicitor for the Patent Office that the subject-matter of appellant’s present application, as stated in his claims 23, 26, 27, and 28, was involved in said interference proceeding, and was common to the disclosures of appellant and other parties to said interference; that it was his duty, if he asserted any such claims, to proceed under Rule 109 of the Patent Office to move to amend his application to include the same therein, and to thus procure their addition as counts to the interference or interferences, as the same might be necessary; and that, not having done so, he should now be estopped to make such claims. The principle underlying the application of the doctrine of estoppel is thought by said tribunals to be that to now allow these claims would be to ‘provide grounds for a new interference involving an application with which the applicant has already been involved in interference.’
“ln response to this the appellant argues that there was no common subject-matter between his application and that 0f MacClatchie in said interference, but that there was such common subject-matter between his application and that of Paterson et al., another party thereto, that the addition of said counts would have resulted only in a redeclaration of interference between appellant and the party Paterson et al., which would have resulted in no injury to Paterson et al. This, counsel argues, would bring the case squarely within the doctrine announced by the Court of Appeals in Re Martin, 48 App.D.C. 187. In that case, where estoppel was urged, the court said: ‘Assuming that Martin should have moved under rule 109, his failure to do so is not shown to have resulted in injury to anyone; therefore, one of the elements necessary to an estoppel is absent.’
«Tlle doctrine announced in the Martin Casc ig not in harmony with other deci. slons Q£ the sajd court 0f Appeals on this subject These cases hold that if the mat_ t£r was Qne which haye bcen deter_ mined in the first interfercnce; the party haying a right lQ haye tbem so detcr„ mined) who fa¡ls t0 do so> cannot aftcr_ ward require their consideration. The rule prevails, irrespective of the number of parties in the original interference. In determining whether the same could have been so determined, the interference in fact depends chiefly upon the subjecmatter disclosed, and not merely upon the language of the respective claims. The following cases are in point and add no such limitations to the doctrine as are stated in Re Martin, supra; Blackford v. Wilder, 28 App.D.C. 535; New Departure Mfg. Co. v. Robinson, 39 App.D.C. 504; In re Capen, 43 App.D.C. 342; In re Dement, 49 App.D.C. 261, 263 F. 813; Application of Doble, 57 App.D.C. 10, 16 *210F.2d 350. It will be noted that in some of these cases, following the Martin Case, that case is not cited as authority.
“Soon after this court took jurisdiction of appeals from the Patent Office tribunals, we took the same view of the matter, and have since continued these holdings. In our first examination of the subject (In re Austin, 40 F.2d 756, 759, 17 C.C.P.A. [Patents] 1202) we said, in part:
“ * * 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.’
“This doctrine of estoppel is further developed in Re Krauch et al., 56 F.2d 290, 19 C.C.P.A. [Patents] 1003; In re Boudin, 58 F.2d 448, 19 C.C.P.A. [Patents] 1187; In re Ellis et al., 47 F.2d 963, 18 C.C.P.A. [Patents] 1060.
“It may be stated that this rule works no hardship to him who is diligent in pursuit of his rights. When an interference is declared, the files of his contestants are open to him. He has full cognizance of their disclosures and claims. So advised, it becomes his duty to put forward every claim he has. Rule 109 affords him this opportunity. If the rule be not enforced or enforceable, then delays .and litigation are greatly increased. It is quite obvious that the doctrine of estoppel, ■ as applied in these cases, results in the better conduct of the business of the Patent Office and in the public good.
“We agree with the Board of Appeals that the appellant is estopped as to claims 23, 26, 27, and 28, and that their rejection therefore was proper.”
Said case of In re Shimer, supra, is distinguished from the case at bar in that Shimqr’s original application was there involved, while here a second application of appellee Chase, not in interference No. 57,166, is involved, and Shimer sought to add counts after the expiration of the motion period, while in the case at bar the present interference was voluntarily declared by the Primary Examiner after the expiration of the motion period in interference No. 57,166.
Attention, however, is called to the fact that Shimer sought the interference while the original interference was pending, and that it was held that he was estopped from making the involved claims solely because of his failure to seek an interference before the expiration of the motion period under rule 109.
It will be observed that in our decision in the case of In re Chase, supra, it is stated that we did not intend to weaken in the least the doctrine of estoppel as announced in the Shimer Case.
The case of In re Brashares, supra, involved an application owned by the assignee of an earlier filed application of one Padmore, which application had been involved in a three-party interference upon a single count. This interference was dissolved without an award of priority, and a patent was issued to one of the parties to the interference, Prescott. Thereafter Brashares copied one claim from the Prescott patent and made certain other claims for the purpose of bringing about an interference proceeding between his application and the Prescott patent. The claims were rejected by the Patent Office tribunals upon the ground of estoppel based upon the failure of Brashares’ assignee to bring a motion under rule 109 in the three-party interference between Prescott, Shaw, and Padmore, the application of the last named party being owned by Brashares’ assignee.
■We affirmed such rejection, although it appears from our opinion that such claims could not have been adjudicated in said interference, and that, if a motion had been made by' Brashares’ assignee in the interference under rule 109 and allowed, a new interference would have been declared between Brashares and one of the parties to the interference, Prescott. In our opinion we stated, 74 F.2d 752: “Upon what were deemed by this court to be apposite and controlling authorities, as well as upon reason, we have more than once affirmed proceedings of the Patent Office under rule 109, supra, thus indicating oúr belief in the validity of the rule itself, and of the reasonableness of its application under the facts which the cases then before us presented.”
In said decision we also discussed the case of In re Shimer, supra, and with respect to it said: •
“In the case of In re Shimer, 69 F.2d 556, 21 C.C.P.A. (Patents) 979, the rule was applied under a somewhat different state of facts.
“Of our findings there, the brief of appellant says:
*211“ ‘ * * * [Those findings] have perhaps gone as far as this or any Court has ever gone in approving the Patent Office in its applications of this doctrine of estoppel.’
“In that case the application involved was the same application which had been in an interference in which the party, Shimer, had seen applications of his opponents which disclosed, but, apparently did not claim, the subject-matter of certain of the claims he was seeking to make in the ex parte proceeding. The tribunals of the Patent Office held that to allow such claims to be made would be to ‘provide grounds for a new interference involving an application with which the applicant has already been involved in interference,’ and this court affirmed that view.
“A difference between the Shimer Case, supra, and the case at bar is that the Brashares’ application, the only application belonging to the General Company, in which the here involved claims could have been made, was never in interference with the Prescott application.
“Careful consideration has been given to contentions made on behalf of appellant, and the authorities cited in support of same, but we are unable to discern any distinction in principle between the situation existing here and that which existed in the several cases above noted in which the application of the doctrine of estoppel by the tribunals of the Patent Office was sustained, nor do we think the facts of this case are analogous to those which existed in the case of In re Chase, 71 F.2d 178, 21 C.C.P.A. (Patents) 1183.”
From the foregoing it clearly appears that the only pertinent fact present in the case of In re Chase, supra, which was not present in one or more of the cited cases, was the fact that the Primary Examiner voluntarily, in effect, declared the interference here involved, while in the cases cited either the party estopped sought an interference after the expiration of the motion period, or there had been an entire absence of action by any one with respect to the interference upon the claims involved.
This brings us to a consideration of the question of whether a voluntary declaration of an interference by the Commissioner of Patents, acting through his subordinates, prevents the application of the rule of estoppel announced in the Austin, Shimer, and Brashares Cases, supra.
It is clear that interference No. 60,503 was declared long after the motion period in interference No. 57,166 had expired, and it is also clear that if, immediately prior to the time interference No. 60,503 was declared, Chase had moved in interference No. 57,166 to bring in his application here involved, without any showing of excuse for delay in making the motion, such motion would have been denied; or, if granted, appellant could have successfully maintained a motion to dissolve the interference upon the ground that the counts were unpatentable to Chase by reason of estoppel.
Rule 109 of the Rules of the United States Patent Office reads as follows:
“109. An applicant involved in an interference may, within a time fixed by the examiner of interferences not less than thirty days after the preliminary statements (referred to in rule 110) of the parties have been received and approved, or if a motion to dissolve the interference has been brought by another party, within thirty days from the filing thereof, on motion duly made as provided by rule 153, file an amendment to his application containing any claims" which in his opinion should be made the basis of interference between himself and any of the other parties.
******
“Any party to an interference may bring a motion to put in interference any claims already in his application or patent which should be made the basis of interference between himself and any of the other parties. Any party to an interference may bring a motion to add or substitute any other application owned by him, as to the existing issue, or to include an application or a patent owned by him, as to claims which should be made the basis of interference between himself and any of the other parties. Such motions are subject to the same conditions and the procedure in connection therewith is the same, so far as applicable, as hereinabove set forth for motions to amend.”
We are frank to say that in our decision in the Chase Case, supra, we were of the opinion that the voluntary declaration of an interference by the Primary Examiner was equivalent to the examiner’s having allowed a motion by Chase in interference No. 57,166 under rule 109 to bring in his second application, upon a showing *212of cause for failure to file such motion during the motion period.
We are now of the opinion that we were in error in this view; that interference No. 60,503 was inadvertently or improvidently declared by the Primary Examiner; and that upon the record before us appellee was estopped under rule 109 from making the claims constituting the counts here involved, and could only be relieved from such estoppel by a showing upon the record in interference No. 57,166 of good cause for not having complied with rule 109. There is no such showing, and there is no indication in the record that, if the Primary Examiner had not voluntarily declared interference No. 60,503, appellee Chase would ever have sought such an interference.
Appellee contends that the right to extend time for motions under rule 109 is discretionary with the Patent Office, and that the declaration by the Primary Examiner of the present interference was a tacit waiver by the Patent Office of any objection as to the timeliness of the setting up of said interference.
It seems to be the practice of the Patent Office, continued for many years, to admit on motion additional claims and applications to an interference previously declared, after the expiration of the motion period under rule 109, upon a showing of cause for delay in making the motion. This practice, however, is not here involved, for the question before us is, may. the Primary Examiner properly declare an interference at a time when the claims are not allowable in the application of one of the parties because of his failure to bring them forward in a prior interference to which he was a party.
It is not here claimed that rule 109 is' invalid or unreasonable. In. the case of United States ex rel. Horace Koechlin et al. v. Marble, 1882 C.D. 442, the Supreme Court of the District of Columbia, in discussing the rules of the Patent Office, said: ‘‘ * * * Congress, in creating the Patent Office, has by express legislation given that Office the power to enact rules for its conduct. Those rules, if they are within the powers of the .Office, are just as authoritative as the laws of Congress itself, if within the limitation of its powers. jj: * * »
The rules, in so far as they affect the rights of applicants, are necessarily binding upon the officials of the Patent Office as well as the applicants.
To hold that the Primary Examiner may ignore rule 109 when a party, by failure to comply with it in an interference proceeding, has lost any rights he may have had to claims in his application, and declare another interference restoring those rights, without any showing of excuse by such party in the original interference for not complying with the rule, thus relieving himself of the estoppel against him, would create an intolerable situation of confusion in the prosecution of applications in the Patent Office. No party to an interference could know even after the interference had been terminated what issues he might be called upon to meet. By the observance ' of rule 109, where the motion period has expired in an interference all parties thereto are reasonably certain that there will be no other or further contest between the parties or any of them with respect to the applications in interference, or other applications held by one of them involving the same invention disclosed in one of the applications in interference.
We conclude that, when interference No. 60,503 was declared, the claims corresponding to the counts here involved were, upon the record before us, unpatentable to appellee by reason of estoppel occasioned by his failure to comply with rule 109 in interference No. 57,166, the record not disclosing any excuse for such failure. This being true, the motion to dissolve thq interference should have been granted.
It appears from the decision of the Examiner of Interferences that a like motion to • dissolve was made when interference No. 60,503 was reformed after our decision in the case of In re Chase, supra.
It is true that the doctrine of estoppel is not favored, because estoppels .preclude a party from showing the truth; but it must be remembered that, when interference No. 57,166 was declared, appellee Chase had access to appellant’s application here involved, while appellant had no knowledge of appellee’s application involved in the interference at bar. After the motion period under rule 109 in interference No. 57,166 had expired, appellant had the right to assume that neither appellee nor his assignee had any other pending applications which would interfere with appellant’s application in said interference; and if, after such motion period expired, appellee sought to excuse himself for not *213complying with rule 109, appellant would have a right inter partes to resist any motion by appellee to add any other application to the interference.
These considerations lead to the conclusion that rule 109 is a reasonable one, but inasmuch as its reasonableness has not been questioned we will not pursue this subject further.
For the reasons hereinbefore stated, we feel compelled to come to the conclusion that we were in error in the case of In re Chase, supra, in considering that the voluntary declaration of interference No. 60,503 by the Primary Examiner, followed by the declaration of interference No. 69,-901, was a fact which prevented the operation of rule 109 as an estoppel against appellee herein.
There is some contention by appellee that the Chase application here involved is for a different invention than that disclosed in the first Chase application involved in interference No. 57,166. Appellant contends that the counts before us are directed to the same invention as that covered by the counts of interference No. 57,166, differing therefrom only in scope.
In the decision of the Board of Appeals in interference No. 60,503, it is stated: “The counts of the present issue are somewhat more specific than the count of the issue of the earlier interference but they relate to the same general subject matter. It is admitted that they do not read on the earlier Chase application.”
The Avery application here involved is the same application that was involved in interference No. 57,166. Apparently no division was required upon the theory that the application involved separate and distinct inventions, and we do not think that any differences between the counts of the interference before us and the count in interference No. 57,166 should prevent the application of rule 109, assuming without deciding that if the invention involved in interference No. 57,166 was separate and distinct from that involved in the interference at bar, compliance with rule 109 in bringing the invention here involved into interference 57,166 would not have been obligatory.
We are not unmindful that the United States Court of Appeals for the District of Columbia has, in the case of International Cellucotton Products Co. v. Coe, 66 App.D.C. 248, 85 F.2d 869, expressly approved our decision in the case of In re Chase, supra, and has held that, where an interference has been declared by the Patent Office, estoppel will not lie against a party to that interference with respect to counts or claims that could not have been adjudicated in that interference. In other words, in the view of that court, estoppel in such cases can be applied only under the doctrine of res adjudicata.
We of course entertain the highest regard for the views of that court, and disagree with it most reluctantly. The conflict of decisions may create an embarrassing situation for the tribunals of the Patent Office, but we are convinced of the soundness of our decision in the case of In re Shimer, supra, expressly affirmed in the case of In re Chase, supra, and again in the case of In re Brashares, supra, holding that estoppel will ordinarily lie for failure to comply with rule 109, even though a second interference be necessary; or, in other words, that estoppel is not restricted to the application of the doctrine of res adjudicata. We would observe that if, in the opinion of the Commissioner of Patents, the interests of the public and orderly procedure in the Patent Office would be better served by adherence to the views expressed by the Court of Appeals of the District of Columbia in the case of International Cellucotton Products Co. v. Coe, supra, it is of course within the power of the commissioner so to amend rule 109 as to avoid any conflict of decisions.
It is also a matter of the utmost regret that we feel compelled to overrule our decision in the case of In re Chase, supra. The Patent Office tribunals correctly followed our decision in the case last cited, and we reverse the Board of Appeals only because we feel called upon to reverse, in effect, our own decision in the case of In re Chase, supra. However, the judges of courts are human and not infallible, and when they err, as they sometimes do, they should not hesitate to correct their errors.
To recapitulate, while the issues herein could not have been decided in interference No. 57,166, because all of the parties thereto could not have made the claims constituting the counts, the same situation existed in the case of In re Shimer, supra; in that case the original interference had not terminated at the time that Shimer sought to add other *214counts, and in the case at bar, appellee claims that interference No. 57,166 had not terminated at the time the interference before us was declared. The one material point of difference in the two cases is that in the case at bar the interference was voluntarily declared by the Primary Examiner, while in the Shimer Case the Primary Examiner had refused to declare a second interference. This one point of difference we have fully discussed herein, and we conclude that this point does not so distinguish the two cases as to relieve appellee from estoppel by reason of failure to proceed in interference No. 57,166 within the motion period under rule 109.
It follows from the foregoing that the decision of the Board of Appeals must be reversed.
In the briefs of both parties there is considerable discussion of the question of whether, if appellant be awarded priority of invention, he will be entitled to a patent embracing the counts here involved. We have given this question no consideration, for that is a matter which may not be determined in this appeal.
An addition to the record in this case was made by writ of certiorari, issued upon application of appellee. The writ was granted, and inasmuch as it appears that such addition was proper and material to the issues herein, the costs of such addition will be assessed against the appellant.
The decision of the Board of Appeals is reversed.
Reversed.