Lorimer v. Keith

41 App. D.C. 562, 1914 U.S. App. LEXIS 2221

• Court: Court of Appeals for the D.C. Circuit
• Decided: March 2, 1914
• Docket: Nos. 874, 877 and 878
• Status: Published

Opinion

Mr. Chief Justice Shepard

delivered the opinion of the Court:'

The earlier Lundquist application of March 1, 1899, clearly disclosed an automatic telephone system embodying the invention of the issue of the three-party interference, and count two of the two-party interference. This application was allowed April 5, 1901, forfeited for failure to pay the final fee and abandoned; but in the meantime his present application had been filed. While the features of the broad invention are shown in both applications, there is a specific difference between the forms of construction set out and claimed in each.

Based upon these specific differences of construction, counsel for the opposing parties contend with ability and earnestness that the second application cannot properly be regarded as a continuation of. the first. The several office tribunals, in turn, denied this contention. We think this conclusion is sound and supported by the following cases: Godfrey v. Eames, 1 Wall. 317, 324, 17 L. ed. 684, 685; Cain v. Park, 14 App. D. C. 42, 47; Lotterhand v. Hanson, 23 App. D. C. 372, 375; Lotz v. Kenney, 31 App. D. C. 205, 209 ; Von Recklinghausen v. Dempster, 34 App. D. C. 474, 477; Field v. Colman, 40 App. D. C. 598, 605. As was said by Air. Justice Van Orsdel in the last case cited: “The right of an applicant, by substituted application, to relate back to the date of filing the first application for reduction to practice, broadly depends upon whether the substituted application is for the same invention as that disclosed in the original application; not that the specific disclosure of the first and second applications may be different, or even patentably different, if generically they relate to the same invention. This interference is to determine who is the prior inventor of the invention in issue. * * * The invention in interference is defined by the counts of the issue. These counts were formulated by the Examiner for the purpose of describing and limiting the invention claimed by the parties to the interference. They relate to the respective embodiments [of the invention] as they existed at the date of the declaration of the interference. It is not material, then, as affecting the rule of continuity, if appellee’s device in interference is not the specific embodiment of the device of the 1894 application, or that there may be changes in mechanism, or even patentable improvements in the later device, if it relates to the same invention, and the counts of the issue can be read into the original invention as disclosed by the 1894 drawings.”

The fact that in that case the several successive applications specially referred to those preceding does not affect the application of the principle. See also Victor Talking Mach. Co. v. American Graphophone Co. 140 Fed. 860, 76 C. C. A. 180, 145 Fed. 350. The reasoning of the tribunals of the office on the point is quite satisfactory.

Each decision, in turn, reviews the evidence relating to the claims of the opposing parties to conception, disclosure, and reduction to practice of the issues of both interferences prior to the date awarded Lundquist in each, at length and with fairness. It is the rule not to reverse such findings, unless plain error can be shown therein. No such error has been shown; and without further discussion the decision in each case will be affirmed. The clerk of this court will certify this decision to the Commissioner of Patents as required by laW. Affirmed.