ethyl, lead di-methyl di-ethyl, lead tri-ethyl methyl, lead tetra-ethyl. The applicant's claims emphasized, particularly, the use in combination of lead tri-methyl ethyl, lead di-methyl di-ethyl, and lead triethyl methyl. The use of lead alkyls in gasoline to minimize knocking was old in the art but, prior to the present application, reliance had been placed, mainly, upon tetra-ethyl.

During the prosecution of the application the Examiner, acting under the provisions of rule 96 of the Patent Office,' suggested to Bartholomew, who was the applicant and appellant's assignor, a claim, for the purpose of interference with other parties, and advised Bartholomew that if he did not present the claim by a given date his failure would be considered a disclaimer of the subject matter involved in the suggested claim. The Examiner's suggested claim was as follows:

Liquid fuel for internal combustion engines of the otto cycle multicylinder type comprising a mixture of hydrocarbons of such varying volatility and forming such varying air-fuel ratios as to cause material variation in knocking tendency of the several cylinders in operation and containing a small quantity of a mixture of volatile lead alkyls consisting of tetra ethyl lead, tri ethyl methyl lead, di ethyl di methyl lead, ethyl tri methyl lead, and tetra methyl lead, whereby variation in separate cylinder knocking tendency is eliminated and the antiknown value of the fuel is raised.

The applicant declined to present the suggested claim, on the following ground:

that

Applicant cannot find and the Examiner has not pointed out any subject matter in the present application which will support this claim or which states applicant is trying to achieve the result claimed. Applicant specifically denies that this claim names a direction or a result which the present application endeavors to attain.

Thereupon the Patent Office rejected the claims. Then followed the present proceedings in the district court from which this appeal

was taken.

[1][2] As appellee does not deny the truth of the trial court's finding (No. 12) that the applicant's claims were rejected by the Patent Office solely because he failed to present the suggested claim, we accept

1 Rule 96, so far as pertinent, reads as follows: "Whenever the claims of two or more applications differ in phraseology, but relate to substantially the same patentable subject matter, the Examiner shall suggest to the parties such claims as are necessary to cover the common invention in substantially the same language. The Examiner shall send copies of the letter suggesting claims to the applicant and to the assignee, as well as to the attorney of record in each case. The parties to whom the claims are suggested will be required to make those claims within a specified time in order that an interference may be declared. Upon the failure of any applicant to make any claim suggested within the time specified, such failure or refusal shall be taken without further action as a disclaimer of the invention covered by that claim unless the time be extended upon a proper showing. After judgment of priority the application of any party may be held for revision and restriction, subject to interference wtih other applications."

2

the finding as correct. In his brief the Commissioner contends, without qualification:

It is well settled that where an applicant has disclaimed certain subject matter by failing to present a claim thereto which was suggested for purpose of interference, that subject matter is properly considered as prior art with respect to the applicant.

Apparently the Patent Office and the trial court proceeded on the same theory. The trial court also found:

13. By failing to make the claim suggested by the Examiner, Bartholomew disclaimed the fuel defined by the suggested claim. * * * 19. The claims at bar are not patentable over the fuel defined by the claim suggested by the Examiner to Bartholomew.

This, we think, goes too far. Whatever may be the effect of the rules adopted by the Patent Office, whatever may be the merits of the present claims, it is obvious that "the prior art" cannot include facts unknown to the prior art before the application was filed. This disputed claim was suggested by the Examiner, not to describe the prior art, but to provide a basis for interference between applicants, in order to determine which was the first inventor. If the claim, in fact, described the prior art then no applicant was entitled to a patent and the interference proceeding was unnecessary. If the claim, in fact, described the prior art, it did so, not because one applicant or the other disclaimed it, but because the facts set out in the claim. were actually known to the prior art.

[3] Assuming the validity of rule 96, its effect is to establish, under certain circumstances, an estoppel against the applicant who declines to present a suggested claim. Just what the nature and extent of that estoppel may be is not necessary to decide. It is enough to say that we cannot support the theory of the Patent Office that the disclosures of the suggested claim constitute prior art against the applicant. The extent of estoppel will depend, in the particular case, upon how the suggested claim is drawn and for what reason it is refused by the applicant. Under some circumstances the result may be similar to that which would obtain if the teachings of the prior art had been sufficient to bar a patent. But only in this limited sense is

2"12. The Patent Office Examiner thereafter finally rejected the applicant's claims solely because the applicant had failed to make the suggested claim."

See Mell v. Midgley, 31 App. D. C. 534, 537, 136 O. G. 1534: "It is well settled that the rules of procedure in the Patent Office, when not in conflict with any provision of law, have the full force and effect of statutes." [Italics supplied]; In re Mraz, 36 App. D. C. 435, 439, 164 O. G. 978; Westinghouse Traction Brake Co. v. Christensen, 3 Cir., 243 F. 901, 905; In re Horton, C. C. P., 58 F (2d) 682, 683, 422 O. G. 607. See also, United States ex rel. Steinmetz v. Allen, 192 U. S. 543, 556, 109 O. G. 549.

Lyon v. Boh, 2 Cir., 10 F. (2d) 30, 34; In re Austin, C. C. P. A., 40 F. (2d) 756,759, 399 O. G. 625. Cf. Application of Doble, 57 App. D. C. 10, 16 F. (2d) 350, 356 O. G. 4; In re Capen, 43 App. D. C. 342, 344, 214 O. G. 685.

5 International Cellucotton Products Co. v. Coe, 66 App. D. C. 248, 85 F. (2d) 869, 471 O. G. 243.

the analogy permissible. The confusion, between an estoppel and the condition of the prior art," has been unfortunate and misleading. This is well illustrated in the present case.

On oral argument the Commissioner conceded that if the interpretation contended for in his brief were pressed to its logical limits, then rule 96 and the practice under it would be arbitrary and capricious. This is the ever-present danger of rules of thumb which are designed to achieve convenience by avoiding the exercise of administrative discretion. Whether it was necessary to press the proposed interpretation to its logical limits in the present case is immaterial. That the rule was so interpreted and applied by the trial court is apparent. The case will be remanded for findings and determination. on the merits. Reversed.

[U. S. Court of Appeals for the District of Columbia]

SPECIAL EQUIPMENT COMPANY v. COE, COMMISSIONER OF PATENTS No. 8,466. Decided June 19, 1944

566 O. G. 4; 144 F. (2d) 497; 62 U. S. P. Q. 12

1. PATENTABILITY-SUBCOMBINATION.

Upon consideration of an application, assigned to appellant, for a patent on a machine which automatically cuts, peels, and cores pears for canning, and which consists of (1) a revolving turret in which the tops of the pears are "bobbed" or cut off, (2) a mechanism which transfers them to a splitting knife which cuts them in half, and (3) a second revolving turret in which the halved pears are peeled and cored, wherein claims had been allowed on the entire machine Held that if other claims for a subcombination of the parts of the machine omitting the cutting knife "present a distinct and useful invention, nevertheless * * * a patent on that invention should be denied" for the reason "that appellant's purpose in making a distinct patent claim on the subcombination is not to stimulate the commercial development or financial return from that patent" but instead "to exploit and protect the patent monopoly of another related invention, to wit: the complete machine.”

2. SAME-SAME.

The dangers

"To grant a patent for the purpose of blocking the development of machines which might be constructed by others is a violation of the constitutional provision that the patent law must promote science and the useful arts. of approving a principle which permits a patent monopoly to be extended by granting claims on distinct inventions, which the applicant has no intention of exploiting as distinct inventions, are apparent in the growth of modern monopolies based on patent control. Such patents are invalid for the same reason which condemns broad and misleading claims. That principle, as stated by Mr. Justice Bradley as early as 1872, is to protect the public from 'ingenious attempts to discourage further invention in the same department

of industry

• In re Williams, C. C. P. A., 62 F. (2d) 86, 88, 426 O. G. 785.

3. SAME-SAME.

"A patent claim should not be granted where it appears that the patentee expects to use it not for manufacture and sale but to protect another patent claim. If the record shows that the patent claim is made for the unlawful purpose of protecting another patent it is an unlawful patent."

4. SAME-SAME.

"This decision does not deprive appellant of a reward for his ingenuity in devising the mechanism set out in the subcombination claims. All it does is to deprive him of a distinct patent right in that subcombination standing by itself. The same subcombination mechanism is set out in the claims on the complete machine which have been allowed. These claims which have been allowed on the complete machine are obviously not inventions distinct from each other but different ways of describing the single invention of the complete machine. They, therefore, establish no distinct patent rights but instead only outline the scope of the principal invention."

5. SAME-SAME.

"The more distinct patent rights an inventor can get on the parts of a machine the more power he has to handicap the inventive ingenuity of others who may use these same parts in more original ways. The question of how many distinctly patentable parts there are in a patent on a whole can never be determined with any certainty through the process of logic or analysis. It seems, therefore, a safe, practical test to limit the number of distinct patent rights in a single machine to those which the inventor expects to exploit separately, and not to suppress. Distinct patent rights should not be granted for the sole purpose of handicapping future inventors whose discoveries would not otherwise infringe the complete patent."

APPEAL from the District Court of the United States for the District of ColumAffirmed.

bia.

Mr. Curtis F. Prangley (Messrs. James M. Graves and Ballard Moore of counsel) for Special Equipment Company.

Mr. W. W. Cochran (Mr. E. L. Reynolds of counsel) for the Commissioner of Patents.

Before MILLER, EDGERTON, and ARNOLD, Associate Justices

ARNOLD, A. J.:

The alleged invention in this case is a machine which automatically cuts, peels, and cores pears for canning. It consists of (1) a revolving turret in which the tops of the pears are "bobbed" or cut off, (2) a mechanism which transfers them to a splitting knife which cuts them in half, and (3) a second revolving turret in which the halved pears arc peeled and cored. The machine has been highly successful. It has made it possible to double the annual pear pack since 1931 and materially reduced the cost of canned pears. About eighty percent of all pears canned are prepared by this machine. A patent has been allowed on the entire machine.

This appeal is taken from the rejection of claims for a subcombination of the parts of a machine omitting the cutting knife. For convenience we will refer to the machine without the cutting knife as

the partial machine, and the machine with the cutting knife as the complete machine. The trial court rejected the claims in effect because they did not represent a true subcombination. It found that the cutting knife was an essential element to produce a useful result. It concluded, therefore, that the machine without the cutting knife was not the invention which was disclosed in the application, and that claims which left out the cutting knife did not actually describe the invention.

If it be true (1) that the subcombination does not produce a useful result, and (2) that only one invention is disclosed, to wit: the complete machine, the refusal of the subcombination claims here is justified. However, these propositions rest on a very slender foundation. In answering them the plaintiff showed motion pictures of the subcombination in actual operation without the cutting knife. It was clear that the result was far more useful than the old method of preparing fruit by hand. The only basis for the argument that the result was not useful rests on the fact that the work was done much better by the complete machine. In such twilight cases there is no real test whether or not the application discloses one invention or two distinct inventions. In this case it seems more plausible to say that the subcombination does produce a useful result and that two distinct inventions are disclosed in the application.

[1] However, we need not decide this question because even if we take appellant's contention at its face value and assume that the claims for the subcombination present a distinct and useful invention, nevertheless we believe that a patent on that invention should be denied. The reason is that appellant's purpose in making a distinct patent claim on the subcombination is not to stimulate the commercial development or financial return from that patent. Instead, the record shows that it is to be used to exploit and protect the patent monopoly of another related invention, to wit: the complete machine. There is no intention to make or license others to make the partial machine because, although it is possible to use it without the cutting knife, it is not designed for such independent It is only an artificial and clumsy substitute for the complete. machine. It requires that the fruit first be cut in half and then the two halves joined together by hand before they are inserted. There is no rhyme

use.

there

or reason for manufacturing such a partial machine when is available the complete machine which does the cutting mechanically.

The only real value of a patent on this subcombination is to protect the patent on the complete machine. How important that protection may be in this case we cannot ascertain. Theoretically if the complete machine is adequately described in the specifications the sub