Opinion of the Court.

[47 App. then points out that the advantage of such an electrically controlled apparatus lies in the fact that the pressman may have the switchboard located near the folder, from which point all adjustments may be made.

The first group of claims, including claim 2, was rejected because, in the opinion of the Patent Office, they are sufficiently broad to cover the adoption of a plurality of independent electric circuits and motors in connection with the machines of Goss and Spalekhaver, patents for which were granted in 1907 and 1910, respectively. These patents disclose ink fountains in which manually operated means are provided at the ends of the fountains for adjusting the individual screws. It is the view of the Patent Office that it was common practice to employ electric circuits and magnets to control mechanical motion; but it is strange, indeed, if this was so obvious, that Goss and Spalekhaver did not employ them instead of the less desirable devices they did use. However, we agree with the Patent Office that this group of claims is very general, and not drawn to cover applicant's real invention, which was a centrally located control for inking fountains. As the Assistant Commissioner said, "Applicant has devised a scheme for controlling the inking fountain from a distant point, preferably the point where the paper issues from the press." The Assistant Commissioner thereupon allowed applicant nine claims which had been disallowed by the lower tribunals. But in the allowed claims applicant was restricted to electric means for controlling the fountains. We do not think he should be thus limited. He is the first to conceive and work out the idea of distant control, and should be given a claim as broad as his invention. Obviously, his claims ought not to be so narrowed as to invite competitors, by substitution of other means, to effect the same result and thus deprive the real inventor of the fruits of his discovery. We think the allowance of claim 11, or of a claim or claims of equal breadth, will accomplish the desired end.

The decision is reversed as to claim 11, but affirmed as to the other claims involved.

UNITED STATES EX REL. INTERNATIONAL MONEY MACHINE COMPANY v. NEWTON.

MANDAMUS; PATENT INTERFERENCE.

Mandamus to compel the Commissioner of Patents to vacate an order declaring an interference, contrary to the general rule that his discretion in such cases cannot be controlled by mandamus, cannot be granted on the ground that the discontinuance of a prior interference is res judicata as to the present interference; but that defense can be raised and preserved at all stages of the interference proceeding. (Citing Gold v. Gold, 34 App. D. C. 229.)

No. 3134. Submitted February 5, 1918. Decided March 4, 1918.

HEARING on an appeal from a judgment of the Supreme Court of the District of Columbia dismissing a petition for a writ of mandamus to compel the Commissioner of Patents to vacate certain proceedings in the Patent Office in connection. with a redeclared interference.

Affirmed.

The COURT in the opinion stated the facts as follows:

This appeal is from a judgment of the supreme court of the District of Columbia denying a motion of appellant, International Money Machine Company, relator below, for judgment, and dismissing its petition asking for a writ of mandamus against the respondent, Commissioner of Patents, to compel him to vacate certain proceedings in the Patent Office in connection with a redeclared interference.

It appears that an interference containing three counts was declared between an application of one White and others and an application of one Ovaitt. Relator, the International Money Machine Company, is the owner of the White application and the junior party in the interference. After the preliminary statements had been filed, relator moved to dissolve the interference on the ground that neither party had a right to make

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the claims, and for the further reason that the counts were unpatentable over the prior art.

On hearing, the law examiner granted the motion for dissolution, holding that neither party had a right to make the counts of the issue, and also holding that count 1 was unpatentable over the prior art. From this decision, Ovaitt appealed to the Board of Examiners in Chief, who affirmed the decision. No appeal was taken from the decision of the Board. The dissolution became final, and the applications were returned to the primary examiner for ex parte prosecution, which included rejection of the claims of the issue in accordance with the decision of the Board of Examiners in Chief. Ovaitt thereafter amended certain of his claims and added others, all of which were held by the primary examiner to be patentable over the prior art; and, as he regarded them readable upon the White application, they were suggested to the latter and were made by him. The Commissioner of Patents, acting under the provisions of section 4904 of the Revised Statutes, declared the interference here in question.

Relator seeks, by writ of mandamus, to compel the Commis sioner of Patents to vacate the order declaring the interference and all proceedings in respect of the alleged interfering subjectmatter of the applications of relator and the party Ovaitt subsequent to the dissolution of the original interference.

Mr. John F. Robb for the appellant.

Mr. Theodore A. Hostetler for the appellee.

Mr. Justice VAN ORSDEL delivered the opinion of the Court:

It is well settled that the duty imposed upon the Commissioner of Patents by sec. 4904, Rev. Stat., Comp. Stat. 1916, sec. 9449, to declare an interference, involves the exercise of his judgment upon the facts presented, and cannot be controlled by mandamus. Ewing v. United States, 244 U. S. 1, 61 L. ed. 955, 37 Sup. Ct. Rep. 494. In that case, where it was sought by mandamus to compel the Commissioner to declare an inter

ference, the court said: "It is to be remembered that the law gives the Commissioner both initial and final power. It is he who is to cause the examination of an asserted invention or discovery and to judge of its utility and importance; it is he who is to judge (be of opinion) whether an application will interfere with a pending one; and it is he who, after an interference is declared and proceedings had, is the final arbiter of its only controversy,-priority of invention. The contentions of petitioner put these powers out of view, put out of view the fact that the so-called 'judgment of record' is, as the action of the Commissioner may be said to be, but a matter of administration."

But relator seeks to escape the general rule that the writ of mandamus will not issue to control the discretion of a public officer by invoking the doctrine of estoppel. It is insisted that the dissolution of the original interference is res judicata as to the present interference. It is unnecessary to consider the merits of this contention, since his position is not improved in so far as his right to relief by mandamus is concerned. The question of res judicata can be raised and preserved at all stages of the proceedings in the prosecution of the present interference. It may be availed of by relator in the various tribunals of the Patent Office, through which appeals in interference cases may be prosecuted, and finally in this court on appeal from the decision of the Commissioner of Patents. Gold v. Gold, 34 App. D. C. 229.

It follows that relator's right to have the question of former adjudication finally decided by this court on appeal in the interference proceeding forecloses its right to substitute mandamus for the legal, statutory remedy thus provided.

The judgment is affirmed with costs.

Affirmed.

COCKRELL & COMPANY . CHESAPEAKE & POTOMAC TELEPHONE COMPANY.

TELEPHONE CONTRACT; TERMINATION; UNLAWFUL RATE.

One who continues to accept telephone service after due notice of the termination of his existing contract with the telephone company because the contract rates are unlawful, although declaring that he will pay only the contract rates, must pay the lawful rates for such service irrespective of the terms of the contract. (Citing Heiskell v. Chesapeake & P. Teleph. Co. 45 App. D. C. 138.)

No. 3058. Submitted February 6, 1918. Decided March 4, 1918.

HEARING on an appeal from a judgment of the Supreme Court of the District of Columbia for want of a sufficient affidavit of defense in an action for telephone service rendered. Affirmed.

The COURT in the opinion stated the facts as follows:

Appeal from a judgment for the Chesapeake & Potomac Telephone Company, plaintiff, appellee here, under the 73d

rule.

Plaintiff was furnishing Cockrell & Company, defendant, appellant here, telephone service under flat-rate business telephone contracts which provided that either party might terminate them after the expiration of the first year by ten days' notice in writing. Subsequent to the passage of the Act of March 4, 1913 (37 Stat. at L. 974, chap. 150), creating the Public Utilities Commission, and the ruling of the Commission that such flat-rate contracts were discriminatory within the meaning of said act, plaintiff duly notified defendant of their termination. Thereupon defendant wrote plaintiff that if telephone service was continued "the defendant would not pay for such service upon any terms other than those contained in