Full opinion text
KIRKPATRICK, Judge. This is an appeal from the decision of the Patent Office Board of Appeals, affirming the rejection by the primary examiner, of all the claims of Hession’s application No. 312,951 for a patent on an “Aerosol Apparatus.” The construction and operation of the apparatus are not in issue and none of the appealed claims need be reproduced here. The following facts either are not in dispute or are clearly established: Hession’s application was filed October 3, 1952, and was assigned to Z & W Machine Products Inc., hereafter referred to as Z & W, by an instrument dated October 8, 1952, and duly recorded in. the Patent Office. Previously, on August 26, 1952, an application for substantially the same invention was filed by one Frank A. Ziherl, which application was also assigned to Z & W, by an assignment duly recorded. On December 31, 1954, the Patent Office called upon Z & W to make an election as between Hession and Ziherl and to limit the claims directed to common subject matter to one of those applications. As of January 4, 1955, Isler and Ornstein were the attorneys in charge of both applications and had the duty of taking the necessary steps to comply with Z & W’s direction in this matter. According to a statement made by those attorneys in an amendment filed June 16, 1955, in the Hession application, they ascertained, early in 1955, that Ziherl had drawings dated March 20, 1952, disclosing the subject matter as to which the election was to be made while “In support of Hession’s position as a possible first inventor, was his uncorroborated statement that he had numerous sketches and an actual model of the invention which were prior to March 20, 1952, but which, after diligent search and investigation, he was unable to find and produce.” It is to be noted that the attorneys’ statement that Hession told them that he was unable to produce records “after diligent search” is in conflict with Hession’s statement in an affidavit filed in his application to the effect that prior to April 1955 he “made no attempt and had no reason to produce proofs of inventorship.” No attempt seems to have been made in the record to reconcile those statements. // On the basis of the investigation by the attorneys an election was made in favor of Ziherl and a patent was granted on his application on March 29, 1955, containing claims which are either identical with or not materially different from Hession’s claims involved in the instant appeal. It was the holding of the examiner and the board that this election is binding on Z & W and precludes the allowance of the appealed claims in the Hession application. That holding, somewhat loosely described by the board as “the ground of double patenting,” constitutes the basis of the rejection appealed from. Hession’s application has now been reassigned to him as the result of a series of transactions, the details of which are not important here. In connection with his appeal to the board Hession presented an elaborate showing of documents and affidavits which, if interpreted most favorably to him, show that he made the invention here in issue as the result of an agreement made with Z & W August 15, 1951, by which he agreed to develop an aerosol device in exchange for a payment of $200 per week and expenses as well as certain payments for royalties; that his application was assigned to Z & W as a result of a further agreement dated October 8, 1952; that he disclosed the invention to Ziherl, who was an officer of Z & W, “long before” the filing of Ziherl’s application; that Ziherl improperly appropriated Hession’s ideas and embodied them -in his application without notifying Hession, and that Hession had no knowledge of that application until the Ziherl patent issued at which time “Upon being confronted with the fraudulent activities resulting in the issuance of the Ziherl patent, Lewis Ziherl (brother of Frank A. Ziherl) and G. W. Walker, officers of Z & W, realized the seriousness of the situation and formally agreed to disclaim the Ziherl patent and reassign the Hession application to applicant (Hession).” This was done, and an offer has also been made to file a disclaimer limiting the term of any patent granted on Hession’s application so that it will expire on the original expiration date of the Ziherl patent, thus avoiding any question of extension of monopoly. Also, Ziherl executed an affidavit in which he acknowledged that he was not the inventor of the subject matter set forth in the claims of the patent issued to him. With reference to the two agreements between Hession and Z & W, since Hession states that Z & W refused to pay the royalties as provided under the first agreement but made no mention of the payment of $200 per week and expenses, we assume that such payments were made during the life of this agreement which was in force 14 months less one week. The second agreement among other considerations provided for payments totaling $5,000 to Hession and since Hession in his affidavit did not deny that he received this amount we assume, also, that he received it. We agree with the solicitor that Hession, now having title to his invention and application by virtue of a reassignment from Z & W, has only such rights in the premises as Z & W had. Except for a new ground of rejection raised for the first time by the board, and which we find it unnecessary to consider, the simple question presented by the above rather unusual facts is whether the law would permit Z & W, the common assignee, having elected to pursue the Ziherl application rather than the Hession, which resulted in the issuance of the Ziherl patent, to now require the Patent Office to issue the Hession patent upon the disclaiming of the Ziherl patent. Therefore, it seems to us that it is incumbent upon this court to decide the issues involved here on this basis only and we cannot properly concern ourselves with the fortunes or misfortunes of Hession who had assigned all his right, title and interest in the invention to Z & W for what we presume he thought was an adequate consideration. Even though there is no reason to believe that Hession was involved in the machinations of Frank Ziherl and the other officers of Z & W, he stands in the shoes of that corporation. The law pertaining to the irrevocability of election of remedies generally has been stated in 28 C.J.S. Election of Remedies, § 29, page 1101, as follows: “An election once made between coexisting remedial rights which are inconsistent is not only final and irrevocable and cannot be withdrawn without due consent, even though it has not been acted upon by another to his detriment, but it is also conclusive and constitutes an absolute bar to any action, suit, or proceeding based upon a remedial right inconsistent with that asserted by the election, or to the maintenance of a defense founded on such inconsistent right.” While the election as to whether to obtain a patent on one or the other of two commonly owned applications may not, technically, be an election of remedies, it would appear that the same basic principles should govern in these two types of cases. The requirement by the Patent Office that a common assignee of two or more applications must eliminate conflicting claims from all but one of them is made in accordance with Patent Office Rule 78 (b), 35 U.S.C.A., and section 1101.01(b) of the Manual of Patent Examining Procedure. The object of requiring such an election is to avoid the anomaly of an interference between applications controlled by a single interest. The requirement transfers the burden of determining priority in such a a case from the Patent Office to the assignee, and the election takes the place of an award of priority in interference. Such an award cannot be set aside on the basis of a subsequent showing, no matter how convincing, that the party to whom priority was awarded was not in fact the first inventor. Blackford v. Wilder, 28 App.D.C. 535; In re Shimer, 69 F.2d 556, 21 CCPA 979, 21 USPQ 161; In re Rhodes, 80 F.2d 525, 23 CCPA 816, 28 USPQ 75; Josserand v. Taylor, 159 F.2d 249, 34 CCPA 824, 72 USPQ 357; In re Gregg, 244 F.2d 316, 44 CCPA 904, 113 USPQ 526. The question of the revocability of elections by common assignees has been before this and other courts on several occasions. In the first of these, In re Dunbar, 51 App.D.C. 251, 278 F. 334, 335, the Court of Appeals of the District of Columbia held that a common assignee who had elected to take out a patent on one of its applications was precluded from obtaining a second patent for the same invention on another application. While ex-tention of the monopoly was given as the principal reason for refusing the s.econd patent, the court quoted with approval, the following statement of the Commissioner: “By taking out the Dyson patent, an election was made on the question of priority between Dyson and Dunbar, and the common assignee is just as much bound by that election as if an interference had been declared and priority decided in favor of Dyson.” The question as to the effect of an election by a common assignee first came before this court in In re Mann and Koppelman, 47 F.2d 370, 371, 18 CCPA 1020, 8 USPQ 381. The decision of the court holding the election to be binding was not based on any extension of monopoly, but on the ground that the election constituted a final determination of priority. This is clear from the following statement in the court’s opinion: “Under this state of facts it is obvious that no interference should be declared between the applications of Koppelman and Cooper and of appellants because there were no adverse interests, the beneficiaries of both applications being the same parties. In so far as both applications covered the same invention, and in so far as the disclosures in each specification show claim by the respective applicants of being the first inventors thereof, since no interference could properly be declared because of lack of adverse interest, it became a matter of election by appellants whether they would take out the patent as original inventors upon their application, or, as assignees of Koppelman and Cooper, upon the application filed by the latter. Having elected to take out a patent upon the application of Koppelman and Cooper, it was in legal effect a concession of priority of invention in Koppelman and Cooper and the same invention disclosed in the two applications * * The question was again considered in In re Howard, 53 F.2d 896, 899, 19 CCPA 759, 11 USPQ 280, in which a common assignee of applications o'f Howard and Peiler directed to generally similar subject matter had taken out a patent on the latter application. The court reaffirmed the doctrine of the Dunbar and Mann and Koppelman cases in the following lam guage: “Because of the presence.of such common assignee no interference could be declared between the two applications for the reasons stated in the cases of In re Dunbar, 51 App.D.C. 251, 278 F. 334, and In re Mann & Koppelman, 47 F.2d 370, 18 C.C.P.A. (Patents) 1020, and, if appellant’s assignee had included in the Peiler patent claim 25 of the application upon which it is based, or any claim corresponding to the claims here in issue, clearly the claims in issue should have been rejected, even though Howard was in fact the first inventor.” [Emphasis added.] While the court found Howard’s claims allowable, that action was not based on any modification of the doctrine of election but on the fact that the claims were “for a separate and distinct invention not embraced in the claims of the Peiler patent.” In the case of In re Willoughby, 88 F.2d 482, 24 CCPA 1033, 33 USPQ 46, the court considered the Howard and Mann and Koppelman cases and reaffirmed the doctrine of election as stated in the latter. The question of election was again thoroughly considered in In re Fischel et al., 136 F.2d 254, 258, 30 CCPA 1085, 58 USPQ 80. In that case a common assignee of two applications disclosing the same invention elected to take out a patent on one of them. Thereafter it was discovered that the other applicants, Fisehel and Rieper were actually the first inventors, and claims to the common invention were inserted in their application, while the patent was reissued to eliminate such claims. It was alleged by appellants that no extension of monopoly would be involved in issuing a patent to Fisehel et al., since the previously issued patent was void ab initio because the patentees were not the first inventors of the claimed subject matter. In its opinion the court made the following statement with respect to the doctrine of election: “We think the true doctrine of election in patent cases is grounded upon one or more of three fundamental propositions. First, the application of the doctrine prevents two patents being issued for the same invention. Second, it prevents an avoidance of the determination of priority. Third, it prevents an extension of the monopoly.” The court found the first of these grounds to be avoided by the reissue of the patent without claims to the common subject matter, and it may be noted that the same result has been obtained in the instant case by the disclaimer of the Z & W patent. I In considering the second ground, we are faced with the necessity of understanding the phrase “it prevents an avoidance of the determination of priority.” Webster’s New International Dictionary (1932) gives the following definitions of “avoidance”: “* * * 2. Act of annulling; annulment. -x- -x- * “5. Act of avoiding or shunning; keeping clear of. * * Although it is possible that the court intended to use “avoidance” as in definition 5, we believe the word was used as in definition 2, and that the entire phrase means that application of the doctrine of election will have the effect of preventing a common assignee from annulling the effect of his choice as to which one of two or more assigned applications is to be issued as a patent. In other words, the court was of the opinion that priority is determined by the elective act of the common assignee and he should not be permitted to annul or avoid that determination. We believe our interpretation of this phrase finds support in the following statement of the court: “ * * * Both applications were owned by the common assignee. It elected to take out the broad invention in the Fischel and Thiry patent and is bound thereby. It cannot now, in view of the facts of this case, avoid the effect of the election and the consequent waiver of the right to take out the instant subject-matter in the instant application by contending that it was a mistake. To hold with appellants on this phase of the case would be, in our judgment, to lend hopeless confusion to the administration of the patent laws when questions like that at bar are presented to the Patent Ofiice tribunals.” With respect to the third ground, it was found that extension of monopoly would exist since the patent claims in question had constituted a prima facie monopoly until their invalidity was disclosed. It is clear that both the second and third grounds were significant in the Fischel et al. decision. This is apparent from the following statement of the court: “In the instant case our conclusion is that the proper basis for the application of the doctrine of election by the common assignee of two applications, to wit: extension of monopoly and concession of priority, appears from the instant facts and requires the application of the doctrine.” The most recent rulings by this court on the doctrine of election were In re Keim et al., 229 F.2d 466, 43 CCPA 784, 108 USPQ 330, and In re Ward et al., 236 F.2d 428, 43 CCPA 1007, 111 USPQ 101. In each of those cases, the Dunbar, Mann and Koppelman and Willoughby decisions were cited with approval as supporting the proposition that a cornmon assignee of two or more applications disclosing the same invention is bound by his election in taking out a patent for that invention on one of them and cannot obtain a second patent for it on the other application. In the Keim et al. case the second patent was allowed, but only on the ground that the invention claimed was patentable over that claimed in the first. No case has been cited, and we have found none, in which a common assignee, having elected to take out a patent for an invention on one of two or more applications owned by him, has subsequently been held entitled to a patent on another of his applications containing claims to the same invention. „7, . . . , . . ... quently given m the cases above cited „ ,. . as a reason for not granting a second . , , patent, the fact that the assignees elecf. . ,, , „ . , tion has the effect of a concession and . . ... ...... determination of priority is also consistently given as a reason. Where there are two grounds upon either of which an appellate court may rest its decision, and it adopts both, the ruling on neither is obiter dictum, but each is the judgment of the court and of equal validity with the other. United States v. Title Ins. Co., 265 U.S. 472, 486, 44 S.Ct. 621, 68 L.Ed. 1110. See also Woods v. Interstate Realty Co., 337 U.S. 535, 537, 69 S.Ct. 1235, 93 L.Ed. 1524. The former reason may be said to have been eliminated in the instant case by the disclaimer of the Z&W patent and the offer to limit the term of a patent to Hession, if granted, to expire on the expiration date of the Z & W patent; but the latter reason is still present here, However, even if it be assumed that under some circumstances an election made by a common assignee is not absolutely irrevocable if no extension of monopoly is involved, we are of the opinion that, when a patent has been issued as the result of such an election, a second patent should not be issued on an application owned by the assignee when the election was made, merely because it has been discovered that the election was incorrect. It is not necessary to determine whether there is any state of facts which could justify the issuance of a second patent, since we are of the opinion, for the reasons stated below, that the circumstances of the instant case could not under any reasonable rule relating to election by a common assignee be sufficient for that purpose. Entirely apart from any question of irrevocability of election as a matter of law, an assignee who deliberately and knowingly elects to take out a patent on the basis of the application of one who is not the first inventor should not be allowed to obtain a patent on the basis of an application by the first inventor merely because subsequent developments make such a course appear expedient. In the case at bar not only do we not find that Z & W made a . . , , , ,, , „ . , mistake but on the contrary we find that v „ , ,, . ,, , . Z&W allowed their attorneys to make .... the election knowing that Ziherl did not • , ,, , . invent the device. , Appellant in urging that a mistake was made by Z & W relies largely upon a statement by the lawyer who had charge of the two applications at the time the election was made as to his ignorance of the facts necessary to make a proper decision and his efforts to discover the truth. That approach overlooks the facts that the common assignee was the eorporation (Z & W) and not the lawyer and that it was the corporation, not the lawyer, who was the only party vested with the authority and right to make the election. The fact is that there was no mistake on the part of the corporation. If there was any mistake on the part of the lawyer, it was in relying on the information provided him by the corporathroagh ZiIíer1’ °n® of 0fc+er? who was the applicant for the elefted ’ and w^° kne^that ** had not “fV invention. It is not the “se ®f+ a IawJeil a^ng inadvertently to the detnment of hls chent- The knowledge which Z & W in this case had acquired through its agents and officers, or with which it is chargeable by reason of their knowledge, precludes any pretense that it was laboring under any erroneous belief as to the facts. On the contrary, it is indisputable on this record that it had full knowledge of every circumstance of the entire transaction. It appears that Z & W approached Hession and induced him to develop the apparatus of the application and that from the date of its first agreement with him (August 15, 1951) he “fully and currently disclosed the nature and results” of his work with Z & W and “particularly to its officers G. W. Walker, Lewis Ziherl and Frank Ziherl,” Walker being the president. Certainly, it cannot be denied that Z & W knew of the date of the application of Frank Ziherl, since it had accepted an assignment of it from him before it was filed. Equally, it had knowledge of the filing of the Hession application, also assigned to it, and of the fact that it was filed over a month later. Nor can there be any doubt that it knew that the two applications were for the same invention. Prior to January 1952 the device was made and successfully tested and fully disclosed to Ziherl by Hession and, by March 1952, a production model had been constructed by the corporation itself under Hession’s direction. A corporation can acquire knowledge or notice only through its officers and agents and is held to know all material facts of which they acquire knowledge in the course of their employment and within the scope of their authority, even though they do not in fact communicate it. 19 C.J.S. Corporations, § 1078, page 613. Plainly, Frank A. Ziherl was acting within his powers as an officer in dealing with Hession. He executed for Z & W the agreement of August 15, 1951, which Z & W acted upon and subsequently expressly acknowledged as binding upon it. Further, as stated under that agreement, Z & W agreed to pay Hession $200 per week or 5% of the net sale price of each device sold, whichever was greater, for one year, and 5% of the net sale price thereafter; said device being the subject of both applications under consideration here. Under the second agreement he was to be paid $5,000 in three installments. In other words, under the two agreements, we assume Hession was paid some $15,000. In view of these agreements, it is obvious to us that Frank Ziherl, Lewis Ziherl and G. W. Walker knew who invented the device at the time the Ziherl application was filed and at the time that Ziherl assigned his application to the Z & W Corporation. Under these circumstances, it is difficult to see how it can be said that this common assignee made a mistake when it elected to proceed on the Ziherl patent. And it is extremely significant that not a word of testimony or a particle of evidence has been forthcoming from Z & W or any of its officers that a mistake was made or that the election was not deliberately taken with full knowledge of the facts. The only evidence on the point is what possibly might be derived from the lawyer’s “Remarks” (filed in the Patent Office in connection with an amendment of June 16, 1955) leading to the conclusion that Z & W deliberately either misrepresented the situation to its attorney or allowed him to act in ignorance of the material facts. The element of fraud has been largely discussed in the course of the proceedings in the Patent Office and in the briefs, but it is quite immaterial whether or not the election was made to consummate a fraud. Whatever it may be called, it was not and could not have been a mistake. And if there is fraud it was perpetrated by the party (Z & W) in accepting an assignment from one who did not invent the device, in permitting an election in favor of the Ziherl application, and indirectly asking this court to void the election. It must be remembered it is Z & W’s actions which are under consideration here, not Hession’s. It should be noted that Hession had no financial interest whatever in the patent which is the subject of this controversy from the date on which he assigned the application (five days after he had filed it) until November 1955, when it was reassigned to him, some eight months after the Ziherl patent had issued. His compensation under the agreements was based upon cash payments plus a percentage of net sales of the device. The percentage was not contingent upon the ultimate issuance of any patent. It appears to be argued on behalf of Hession that he had the right to have his name appear on a patent for the invention here involved, regardless of the ownership of the patent. Obviously, any patent issued on the appealed application must bear Hession’s name as inventor, but under the terms of the assignment agreements Z & W was under no obligation whatever to obtain a patent on that application. At the time of the election, therefore, Hession had no rights whatever with respect to an application or patent on the invention here involved and accordingly the election could not have deprived him of anything. There is no evidence that Z & W obtained the contract of October 8, 1952, from Hession and acquired the assignment of the application which placed it in the position of a common assignee of the two applications, by any fraud. Hession in his affidavit does not allege or suggest that the agreement of October 8, 1952, was obtained by any misrepresentation, or that it was unfair or unconscionable, or that he did not get full value for what he sold, or that there existed any confidential relationship which the corporation abused. The lawyer’s “Remarks” above referred to, which have been urged as evidence of mistake, were not sworn to. His statements of fact concerning his inquiry are flatly contradicted by Hession’s affidavit, although, in view of the fact that the corporation at all times had full knowledge of all the facts, the matter is not of great importance. It would be an unusual case indeed in which we would accept an unsworn statement rather than a sworn one. The Patent Office is an administrative tribunal having full jurisdiction in the premises. Courts and other tribunals are frequently asked to vacate or nullify their orders, decrees or actions, but we know of no case where such request was granted without a showing of good cause. It seems to us that it would be hard to find a case presenting less cause for the relief requested than the case at bar. This is not one of those cases where the doubt can be resolved in favor of the applicant since there is no doubt about the law nor the facts. We find no circumstances here which under any view of the effect of an election could justify the setting aside of the deliberate election made by Z & W in favor of Ziherl and since Hession can have no greater rights than those of Z & W, the decision appealed from was proper and is affirmed. Affirmed. . It was terminated by the execution of the second agreement. . The Rules of Practice in the Patent Office, when not inconsistent with the statutes from which they are derived, have the force of law and control the procedure in that Office. Land v. Dreyer, 155 F.2d 383, 33 CCPA 1108, 69 USPQ 602; Anderson v. Walch, 152 F.2d 975, 33 CCPA 774, 68 USPQ 215. . Black’s Law Dictionary, 3d Ed. 1933: AVOIDANCE. A making void, useless, empty, or of no effect; annulling, cancel-ling; escaping or evading. . The record does not show what Ziherl’s position was except that he was an officer. . There is a shade of difference between a mistake and an error. It may be an error for one to enter into a transaction, -whether innocent or fraudulent, but if one does so with full knowledge of all material facts, he cannot plead mistake to avoid the consequences.
WORLEY, Chief Judge (concurring). While I am not in complete agreement with everything said in ' the majority opinion, I am satisfied it reaches the only result the record will fairly support. Hession’s contention below, and here, that he invented the aerosol device but lost his rights through fraud, goes to the very heart of this appeal and deserves careful review by this court. That the board gave full and detailed consideration to Hession’s proofs before holding them inadequate is evident from the following: “We see no merit in appellant’s contention relating to fraudulent action as to the inception of the Ziherl application, and cannot accept this as a determinative factor here. While there may be other tribunals where a question of fraud could be suitably investigated and evaluated, as by "the exhaustive examination of those parties involved as well as other witnesses, we do not have either the machinery or the authority for any such procedure. Furthermore, even apart from this matter, • insofar as the actual record before us is concerned, we find no positive factual evidence therein tending to • establish any fraud, but only what appear to be statements of conclusion by appellant in this direction, presumably based on merely his own personal beliefs. We note in this connection appellant’s comment that prior to the issuance of the Ziherl patent he had no knowledge of the Ziherl application “or that any question of priority of inventorship existed with reference to the subject matter” hereof. It appears, however, that it is stated in the record of this application in the amendatory paper submitted June 16, 1955 presenting claims 14 through 27, that preparatory to the election by Z & W appellant was contacted by their house attorney as to his dates of invention and the evidence in collaboration thereof, and that appellant indicated he was not then able to produce the same after diligent search and investigation. As we see ' it, the implications of such contact ■ as to probable conflict with some ,, t , j i XI other disclosure owned by the as- ,, , , signee should reasonably have been clear to appellant. “Further, in our treatment of the instant issue, we feel that we should call attention to another matter that has not been mentioned by either the examiner or appellant. Regardless of all else, the fact remains that there is in existence the Ziherl patent document having an effective date earlier than the fling date of appellant. In accordance with Section 102 of the Patent Statute, this document by its very existence is a bar to appellant unless properly anteiated. Yet, even in the face of such far, we do not find appellant to have submitted any proper factual evidence to denote his invention of the instant subject matter earlier than the effective date of the patent document in question. This would be a prerequisite even where, as here, there is common claiming, and in view of the nature of the matter before us it would be reasonable that the factual evidence required have the full character specified in Rule 131. While Ziherl may have submitted an affidavit in this application to the effect that he was not the inventor of the subject matter of the patent, this would not of itself impute earlier inventorship of such subject matter to appellant. Thus, even if we were in accord with appellant as to his particular contentions advanced in this case (we are not, as pointed out herein), the absence of a showing as noted to establish appellant’s inventorship earlier than the effective date of the Ziherl patent would itself preclude any holding in appellant’s favor.” (Italics supplied.) in reqUest for reconsideration, Hession challenged the correctness of those holdings. In its final decision, the board again disposed of Hession’s contentions as follows: , ,, , , , , ,, , Appellant also contends that we erred m not finding fraud to exist , ,, , , , . ,, , here as alleged by him, on the basis that the facts as pointed out by ap_ pellant therein would point up to the fraud that was committed both with respect to Hession as well as the Patent Office. We see no merit in this contention. In this respect, in-so far as the actual record of this application is concerned any such position as to fraud as taken by appellant must be reached only on a basis of mere implication. As we stated in our decision, there is no positive factual evidence in the actual record before us tending to establish any fraud. “Appellant additionally urges that our comments in our decision relating to failure to antedate the effective date of the Ziherl patent document constituted a new ground of rejection, and that on this basis the instant application should be remanded to the examiner to permit appellant to present additional evidence to antedate the Ziherl application filing date. We do not agree with appellant that the comments in question involve any new ground of rejection. It appears to us that it would stand to reason that in any contention such as here involved of entitlement to a patent because of earlier inventor-ship than another, a necessary concomitant to such contention would be an affirmative establishment of the fact of such earlier inventorship. Hence, in referring to a lack of such prerequisite, our comments would not involve anything in the way of a new ground, but would clearly relate only to consideration of a fundamental matter inherently part and parcel of appellant’s initial basic contention. Thus, we find no basis for any remand such as mentioned by appellant.” (Italics supplied.) Although the instant record is incomplete in some respects, it still has its share of conflicts and inconsistencies. For example, an initial search for corroboration of Ziherl as the inventor was successful, but “after diligent search and investigation” no corroboration could be found for Hession. Although a later search revealed evidence which allegedly supported Hession, that evidence is more in the nature of an assumption by counsel than actual' proof, and certainly would not nullify the corroborating evidence that Ziherl was the inventor. The record is further complicated by two completely contradictory statements by Ziherl as to his inventorship, along with the following from Hession’s request for reconsideration below: “We admit that the statement of Hession under oath conflicts with the statement in the amendment submitted June 16, 1955, by the then attorneys for Hession and Z & W that applieant Hession was contacted as to his dates of invention. * * * ” On such a record, I hardly see how it can be said that the board erred in holding that Hession had failed to properly prove his case. Another element worthy of consideration is the use to which Ziherl put his patent from its issuance until his disclaimer. The record is silent as to how many, if any, licenses were granted innocent third parties. Hession’s patent rights should be crystal clear before this court would be justified in putting him in a position whereby he could subject to legal harassment those who, in good faith, relied on the validity of the Ziherl patent. I submit that this record does not provide that degree of proof. On this , record I am unable to see how Hession’s rights would be “extinguished.” If anyone “extinguished” those rights it was Hession himself. Long before this controversy was born, he willingly and voluntarily sold, for value, his every right, title, and interest, real or imagined, in and to his aerosol device. ■ As I understand the present posture of this appeal, the Ziherl patent now belongs in the public domain, or, as put by Hession’s counsel, “ * * * the Ziherl patent has been disclaimed in its entirety and is a nullity.” In other words, the invention, through no fault of Hession, now belongs to the public. But, as I un-' derstand the dissenting view, it would be withdrawn and a patent given to Hession until 1972. I am aware of no precedent for such action. Certainly this record will not support such a result.
RICH, Judge (dissenting). With due respect for the decision of the majority to affirm, my view of this case, and the basic reasons for my strong belief that we should reverse, can be stated in outline form as follows: The question: Can a common assignee’s wrong choice between two applications, one by the inventor and the other by one who attempted to misappropriate the invention,, be changed within three and a half months of making? The law: There is no statutory law or Patent Office rule on the point. The case law holds that the choice cannot be changed if the result will be: (a) two outstanding patents for one invention or (b) an extension of monopoly in point of time. This case: Here we have neither (a) nor (b) which makes this an interesting and important case of first impression. The court is not bound by statute, rule, or precedent to decide either for or against Hession, the true inventor who is the appellant here. The rejection: The sole ground of rejection urged by the examiner and affirmed by the Board of Appeals was “double patenting.” There will be no double patenting in any form if Hession’s patent is granted. In all of the cases relied on by the Patent Office or in the majority opinion there would have been, which is why this is a case of first impression. Policy: Being unfettered ■ by precedent, the court, by this decision, is making law, not merely applying it. Any new law this court' makes in deciding cases of first impression should be in the interests of doing justice to the injured, of preserving rather than destroying legal rights, of correcting rather than perpetuating error, and of rectifying wrongdoing. Hession: The appellant has complied with all of the statutory requirements to obtain a patent on an invention of admitted patentability. He has committed no fraud or other wrongful act. He is the admitted only (not first) inventor, his assignee has admitted wronging him and has done all within its power to rectify that wrong, effectively removing, so far as I can see, every legal barrier to the grant of Hession’s patent for which it was responsible. Hession, additionally, in pursuit of his tattered, tom and hereby extinguished rights, has offered further sacrifice in the form of terminal disclaimer, as permitted by statute (35 U.S.C. § 253), to avoid the only remaining legal obstacle to patenting. Contrary to the majority view that “we cannot properly concern ourselves with the fortunes or misfortunes of Hession who had assigned all his right, title and interest in the invention,” I think we are very much concerned with the misfortunes of Hession, who is the appellant, and the sole appellant, in this court. If we are not concerned with his rights, with what are we concerned? Since an understanding of my view as to the correct decision (reversal) in this case depends on an understanding of the facts, which are only summarized in the majority opinion, I repeat here my statement thereof substantially as contained in an opinion, prepared shortly after the hearing, which has failed to retain the support of a majority of the court. The Facts Hession’s application stands rejected for “double patenting” in view of a single reference, Frank A. Ziherl’s patent No. 2,705,171. Hession’s invention is entitled “Aerosol Apparatus” in his appealed application and “Fog Spray Applicator” in Ziherl’s patent. In view of the issues here it is unnecessary to know anything about its details but, by way of background, it is a small electrically powered sprayer for liquids such as insecticides, deodorants, and the like in which a motor-driven blower drives air through one or more venturis to the throats of which liquid is delivered and from which it emerges as a spray or mist in whirling air streams. It is a portable device which may have its own liquid container; or it may be adapted, by use of a suitable dip pipe, to be mounted on top of a drum containing the liquid to be sprayed. The essential facts, as shown by the record, are hereinafter given in chronological order. They relate primarily to the interrelationships between the inventor, Hession, the reference patentee, Frank A. Ziherl, Z & W Machine Products, Inc. (herein called “Z & W”), of which company Ziherl was an officer, and the attorneys for Z & W who, as will appear, prosecuted Ilession’s application during a certain period. Z & W is an Ohio corporation and was, during part of the period involved, located in Cleveland, as were its attorneys, moving later to Wickliffe, Ohio, a Cleveland suburb. The sequence of relevant events began in 1951. As of August 10, 1951, Hession entered into a written agreement with Z & W which recited that he was an engineer skilled in the art of atomizing devices, that he had produced at his own expense prototype models of a venturi type of aerosol sprayer upon which patent applications were being prepared and that he had other types of apparatus in contemplation for producing equivalent results. At that time Hession was living in Darien, Connecticut, which is near New York City. Z & W was in Cleveland and the gist of the agreement was that it was to manufacture sprayers designed and developed by Hession who was to render consulting engineering services for a year at a weekly stipend of $200, receiving reimbursement of his expenses for travel, maintenance, and authorized prototype construction, and a “fee of 5% of the net sales price of such unit or units.” His salary was to be applied against any first year royalty. The agreement was rather loosely drawn, but apparently the salary was to be paid for one year. Another provision was that the parties mutually agreed “that an exclusive license shall be executed by Hession to Z & W for the manufacture, distribution and sale of any or all of these methods,” which obviously was intended to mean spraying units. The license and royalty of 5% were apparently to run three years, with escape clauses. This agreement was signed on behalf of Z & W by “Frank Ziherl.” It was signed by Hession on “15 Aug. ’51,” which was five days after its effective date. An affidavit by Hession, dated March 29, 1956, on file in his application states: “Prior to January, 1952, I made and successfully tested the aerosol device, shown, described and claimed in the above mentioned application and fully disclosed the same to Frank A. Ziherl. I thereupon proceeded to engineer a production. model of the aerosol device for Z and W Machine Products, Inc. “By March 15, 1952, I had completely engineered an aerosol device acceptable to Z and W Machine Products, Inc. and this device had been constructed by Z and W Machine Products, Inc., under my direction. This device is shown, described and claimed in my above entitled applica- . tion.” The next event of record in point of time — an event of which Hession, I am convinced, had no knowledge until two and a half years later — was that on August 18, 1952, Frank A. Ziherl executed an assignment of a patent application to Z & W, which application was filed in the Patent Office within a few days on August 26, 1952, Ser. No. 306,331. That application was prepared and filed by a firm of patent lawyers in Washington, D. C. It matured into the Ziherl patent No. 2,705,171 on which Hession’s application stands rejected. From some undisclosed date until January 4, 1955, its prosecution appears to have been carried on by a firm of Cleveland attorneys who, on the latter date, turned it over to the attorneys for Z & W, a different Cleveland firm, as will appear. Returning to Hession, on September 25, 1952, in Darien, Conn., he executed a patent application which had been prepared for him by a firm of New York patent lawyers who filed it in the Patent Office on October 3, 1952. This is the application at bar. I here interrupt the chronological narrative to remark that it is obvious that the Ziherl application, prepared in Washington, and the Hession application, prepared in New York, were independently written on the basis of a common source of information such as a prototype device or drawings. The resemblances are such that they could result only from use of a common source and the differences are those which would be expected to result from independent preparation of patent applications on the basis of the same disclosure. The two applications describe the same device even to the inclusion of patentably unimportant details of construction. Hession, on October 8, 1952, in New York, executed a second agreement with Z & W which took the place of the first agreement. Hession’s affidavit indicates that there had been some disagreement between the parties about paying royalties under the 1951 agreement on aerosol devices in production by Z & W after the first year during which he received weekly compensation. Be that as it may, the first agreement was wiped out, releases exchanged, and Hession agreed to assign, and by separate instrument did assign to Z & W, his entire interest in the application at bar and the invention described therein. The corporation agreed to pay him $5,000 in three installments over a two year period, to take over the prosecution of his application, and in addition to pay him 1% of its net sales “on all sprayer or fog mist applicators embodying the invention of said patent applications sold within a period of three years from the date of execution of this agreement.” The only patent application mentioned in this agreement, signed several weeks after Ziherl filed, is the single Hession application filed October 3, 1952, including, however, “all divisions, reissues, continuations and extensions” thereof and applications covering improvements thereof, which explains why “applications” in the plural were referred to. As a result of the signing of the new agreement and the separate assignment to be recorded in the Patent Office (which was recorded Oct. 10, 1952), a power of attorney in Hession’s then pending application (the one at bar) was given, either by him or by Z & W, to the Cleveland attorneys for Z & W, Isler and Ornstein, who were not yet in charge of the Ziherl application. That power of attorney was accepted by the Patent Office Nov. 28, 1952. Paragraph 2 of the October 8, 1952 agreement provided, inter alia: “Hession agrees to cooperate with and assist patent counsel for Z & W in the further prosecution of said pending patent application and any and all applications covering improvements thereon.” At this point silence reigns in the abbreviated record in this court with respect to a two year period during which prosecution of the Hession and Ziherl applications by two separate firms of attorneys was presumably proceeding at a normal rate. This period ended on New Year’s eve, December 31, 1954, when the Patent Office mailed an action in the Hession application to Isler and Ornstein withdrawing the allowance of some allowed claims and rejecting all pending claims on the copending Ziherl application, filed 38 days ahead of Hession’s, saying that the claims conflicted with Ziherl’s claims, that the two applications had a common assignee and that the subject matter “must be placed in one application in the absence of good and sufficient reasons why this may not be done,” citing Rule 78(b) and Sections 305 and 1101.01(b) of the Manual of Patent Examining Procedure. By January 4, 1955, notwithstanding mailing time and the intervening holiday, Isler and Ornstein had obtained a power of attorney in the Ziherl application, which' transferred its prosecution to them from the other Cleveland firm. On March 1, 1955, they filed an amendment in the Hession application cancelling a number of claims with respect to which they stated in the “Remarks”: “Claims 2, 3, 4, 5, 7 and 8 have been cancelled in view of the fact that these claims are not patentably .distinguishable over the allowed claims in Ziherl application, Serial No. 306,331, which is owned by the assignee of the present application.” It was the filing of this amendment which constituted the “election” by which, the Patent Office insists, Hession is irrevocably bound. This is the wrong choice sought to be corrected. Subsequent to this amendment in the Hession application, Ziherl patent No. 2,705,171, now the “double patenting” reference, issued on March 29, 1955. Before the Patent Office took any further action on the Hession application, which was still pending with other claims, the Z & W attorneys filed another amendment on June 15, 1955, stated to be “In further response to the Office action of December 31,1954 and supplementing the amendment of February 28, 1955,” (the ■one filed March 1, 1955) within three and .a half months of the wrong choice, attempting to undo what had been done by the latter amendment. The cancelled claims were restored. The Z & W attorney filed “Remarks” containing a lengthy “explanation” which recited some of the foregoing facts and made, inter alia, the following statements: “6. Upon receipt of the Office action of December 31, 1954, in the Hession application, the writer of this supplemental amendment, William Isler, was confronted with the problem of electing to place allowed claims common to the Hession and Ziherl applications in one of the two applications, since there was a common assignee of the two applications. “7. In an effort to arrive at a proper election, the writer of this amendment contacted both Ziherl and Hession. In support of Ziherl’s position as the possible first inventor, was the fact that his application was filed approximately five (5) weeks before the filing date of the Hession application, and the further fact that among the drawings which Ziherl had available, there were several drawings dated March 20, 1952, showing the combination which is the subject of the claims in the Ziherl patent. In support of Hession’s position as a possible first inventor, was his uncorroborated statement that he had numerous sketches and an actual model of the invention which were prior to March 20, 1952, but which, after diligent search and investigation, he was unable to find or produce. “8. On the basis of the foregoing evidence, an election was made to place the common claims in the Ziherl application, and the patent was accordingly issued as patent'No. 2,705,171. “9. Approximately six weeks after the issuance of the Ziherl patent, the assignee was notified by .Hession that he (Hession) had, upon extending his search and investigation, found the sketches and models referred to in (7) above. “10. An examination by the writer and others of Hession’s evidence clearly establishes Hession as the first inventor, and is the basis for assignee’s desire to now'rectify the situation by obtaining a patent containing the common claims in Hession’s name, in the manner proposed by this supplemental amendment. “11. In the event that this amendment is entered, the proposed claims allowed, and a patent issued to Hession, assignee will agree to disclaim the Ziherl patent in its entirety, and also will agree, in order to avoid objection to this proposed procedure on the ground that an extension of monopoly will result if a patent is now issued to Hession, to disclaim that terminal portion of the patent issued to Hession which is equivalent, to the period between issuance of the Ziherl patent and issuance of a patent to Hession.” [All emphasis mine.] Of course, the attorney who made the “election” knew only what he was told and, in the light of subsequent events and somewhat conflicting evidence, his “Remarks” would appear to be something of an understatement of some events that must have occurred to produce the extraordinary actions of record. Hession has stated by affidavit: ■ “Prior to April 1955, I had no knowledge of Ziherl patent No. 2,-705,171, issued on March 29, 1955, or of any application therefor or that any question of priority of inventor-ship existed as to the subject matter of my patent application. I therefore made no attempt, and had no reason, to produce proofs of inventorship.” [Emphasis mine.] The circumstances of this case strongly support that statement, the conduct of all parties being consistent only with lack of knowledge on Hession’s part of Ziherl’s application. Hession stated further in his affidavit: . “Prior to March, 1955, I had been approached by Arthur F. Alders, who was in the business of selling aerosol apparatus [made by Z & W], tó máke further developments on the aerosol apparatus for Z and W Machine Products, Inc. Upon learning of. the issuance of the Ziherl patent, I informed Alders that I would have nothing further to do with Z and W Machine Products, Inc. and I advised Lewis Ziherl and G. W. Walker of Z and W Machine Products, Inc. that I considered unconscionable the fraudulent conduct of Prank A. Ziherl in surreptitiously filing a patent application on the aerosol device that I invented and developed. I was assured that Z and W Machine Products, Inc. would take the necessary steps to remedy the inadvertent issuance of th® Zíherl patent aad to ob' taf a patent °“ ^cation." [Emphasis mine.] Documentary support for the above statement of Hession is in the record in the form of two written agreements, one between Hession and Alders, dated August 27, 1955, and a companion agreement between Hession and Z & W dated September 1, 1955. Each agreement con^ains a clause reading: “WHEREAS, a dispute has arisen between Z & W and Hession, arising out of the issUance to Prank A. Ziher!, as assignor, and to Z & W, as assignee, on March 29,1955, of United States Letters Patent No. 2,705,-171, as a result of which Hession is unwilling to enter into any new agreement with Z & W to improve the line of .Specialty Products; [the contract term used to denote Hession-designed . aerosol apparatus manufactured by Z & W for Arthur F. Alders].” The body of the new Z & W agreement, signed by G. W. Walker as President “in settlement of said dispute,” terminated the October 8, 1952, agreement and provided (a) for the diligent prosecution by Z & W of the Hession application, including exhausting all rights of appeal (which is where we are now) by attorneys acceptable to Hession, (b) for the disclaimer of the Ziherl patent, and (c) reassignment of all rights to Hession’s invention and application to him. Z & W did, or caused to be done, all of the things agreed to. This is not the conduct to be expected of either a corporate entity or the officers thereof who knew at all times just what the facts were and just what they were electing (if it can be said realistically that it was the corporation rather than Mr. Isler who “elected”) so as to be incapable of making any “mistake,” which is a basic premise of the majority’s conclusion. If such fictions are indulged in, they should, at least be plausible fictions. Hession later revoked the power of attorney given to the attorneys for Z & W, giving one instead to the attorneys who are prosecuting the instant appeal, explaining this action in his affidavit of March 29, 1956, by saying: “Recent circumstances have shown me that my interests would best be served by having my own attorneys continue the prosecution of my application.” The attempt made by the Z & W attorneys, before this happened, to “rectify the situation” met, on August 16, 1955, with final rejection by the examiner. His position was simply a repetition of the “double patenting” rejection. As to the proffered disclaimers, he said merely that they “would not avoid the rejection,” citing this court’s decision in In re Siu, 222 F.2d 267, 42 CCPA 864, 105 USPQ 428, as the only authority for so holding. It is shown later that the case is not in point. The Z & W attorneys thereupon appealed to the Board of Appeals on February 9, 1956. Hession’s new attorneys thereafter took over and on April 9, 1956, filed their brief before the board and the following additional papers: (1) Hession’s affi- davit of March 29, 1956, giving his version of the facts, from which I have already quoted; (2) an affidavit executed April 3, 1956, by Frank A. Ziherl in which he said: “I acknowledge that I am not the inventor of the subject matter set forth in the claims of patent No. 2,705,171.” [Emphasis mine.] (3) An offer to disclaim signed by Hession March 30,1956, saying: “I, John W. Hession, Jr., applicant in the above named application do hereby offer to disclaim the portion of the term of any patent issuing on the above named application which extends beyond March 29, 1972.” [Emphasis mine.] (4) An actual disclaimer by Z & W as owner of the Ziherl patent, signed by G. W. Walker, President, on April 3, 1956, saying in part: * * * that it has knowledge that Frank A. Ziherl, the patentee therein, is not the first inventor of the subject matter of the claims of this patent and acknowledges that John W. Hession, Jr. is the first inventor thereof and therefore the claims of said letters patent are invalid. Your petitioner, therefore, hereby disclaims all of the claims of said patent. [Emphasis mine.] The offer of terminal disclaimer by Hession, when accepted, would cut back the term of any patent he may be granted to the statutory expiration date of the Ziherl reference patent and the disclaimer of all claims of the latter by Z & W effectively put an end to the Ziherl patent and to any prima facie monopoly secured thereby. As of now there is no patent on Hession’s invention. The disclaimer in the Ziherl patent, we note, was published in the Official Gazette of May 8, 1'956; and is printed on the copy of that patent in the record here. Since the disclaimer by Z & W is part of the official record, anyone examining it would be put on notice that another patent might be granted to Hession, the true inventor, as it should be. So much for the facts which, I should like to note in passing, make quite a “showing of good cause,” if one be needed, for permitting the common assignee here to reverse its theoretical “election.” In this connection I point out that one Frank A. Ziherl, individually, and not acting for or on behalf of the assignee corporation, was the one with the guilty knowledge, who committed the fraud if there was any, and who attempted, as an individual, to pose as the inventor of Hession’s invention. The majority impute his knowledge 'to the corporation to show that it knew all and so could not make a “mistake” but from the above it will be seen that as soon as Hession found out about the Ziherl patent he communicated facts to the corporation, its attorney and officers, and that as soon as they really knew those facts they took immediate remedial action to undo something that they never would have done had they known them at the time when the wrong choice was made. To the majority who say “it would be hard to find a case presenting less cause for the relief requested than the case at bar,” I say “Seek and ye shall find.” The majority seems to have been influenced by the idea that Z & W “accepted” an assignment of Ziherl’s application. There is, however, nothing of record to show they ever heard of it. They did not sign it. It was the usual form of unilateral assignment. It appears to me that the attorney, Isler, acting on behalf of Hession but in the employ of Z & W, the common assignee, and making reasonable enquiry as to the facts he needed within the practical limits of the attorney-client relationship, acted reasonably, though perhaps he should have been more suspicious. In practical affairs the attorney for a small corporation does not have the F.B.I. at his disposal, the scope of his investigations are limited by what his client is willing to pay for, and in this case it seems more than likely that he was genuinely misled in his investigations if his contacts with his client were through the individual Frank A. Ziherl who, for personal, not corporate, reasons was probably prejudiced in favor of his own application. In any event, the facts show that whatever action Frank A. Ziherl may have induced was promptly reversed by the other and higher officers when they actually came into possession of the facts the majority imputes to them. The “Majority” Opinion So much for the facts. What of the law on which the majority opinion relies ? The “doctrine of election,” on which it rests its decision, is to be found, so far as appellate courts are concerned, in a tidy little group of cases. My analysis of them, and of their applic