fact that the junior party's original specifications concluded with the words, "for the construction of expansion joints the plates are preferably made of a width to reach through the entire depth of a pavement, but it is optional to make them of lesser width where the character of the pavement permits," did not entitle him to amend his application by the addition of claims corresponding to the counts of the issue, and that whether certain experiments made by him had disclosed the invention of the issue was immaterial.

No. 1149. Patent Appeals. Submitted March 12, 1918. Decided
April 1. 1918.

HEARING on an appeal from a decision of the Commissioner of Patents in an interference proceeding.

Reversed.

The COURT in the opinion stated the facts as follows:

This is an appeal from the decision of the Commissioner of Patents in an interference proceeding.

Appellant William E. Ficklen, the senior party, filed his application August 21, 1909, on which he obtained a patent June 2, 1914. Appellee Robert D. Baker, the junior party, filed his application February 16, 1910, which was sent to issue April 7, 1914. The issuance of the patent, however, was suspended at the instance of Baker, who filed a substituted specification in July, 1914, in which he copied Ficklen's first three claims, on which this interference was declared.

The invention of the issue relates to a concrete pavement provided with expansion joints extending from the top of the pavement to the roadbed, and reinforcing means embedded in the edges of the concrete blocks at the joints. The Commissioner properly has defined the reinforcing means as “limited to reinforcing means which are supported by the concrete ont of engagement with the earth roadbed."

The counts of the issue are as follows:

"1. A pavement comprising an earth roadbed, a crust supported directly on said roadbed, and comprising a plurality of concrete sections of relatively large area separated from each other by expansion joints extending from the top of the pave ment to the roadbed, and reinforcing means embedded in and

carried by and continuing along the upper portions of the edges of the concrete sections at the joints which require reinforce

ment.

2. A pavement comprising an earth roadbed, a crust supported directly on said roadbed, and comprising a plurality of conerete sections of relatively large area separated from each other by expansion joints extending from the top of the pavement to the roadbed, said sections being formed with shoulders within the expansion joints, and reinforcing means embedded in and carried by and continuing along the upper portions of the edges of the concrete sections at the joints which require reinforcement, said reinforcing means consisting of metal strips located on edge within the expansion joints and resting upon said shoulders formed in the concrete.

3. A pavement comprising an earth roadbed, a crust supported directly on said roadbed, and comprising a plurality of concrete sections of relatively large area separated from each other by expansion joints extending from the top of the pavement to the roadbed, and reinforcing means embedded in and carried by and continuing along the concrete sections at the joints which require reinforcement, said reinforcing means consisting of metal strips set into the upper surfaces of the concrete sections along the expansion joints."

The following portions of the drawings of the respective parties are sufficient to illustrate the issues here involved: Figures 3 and 6 of Baker's original application:

Argum of Counsel.

Figures 3, 3a, and 6 of Baker's substitute application:

[47 App.

Figures 5 and 6 of Ficklen's application on which patent was

The right of Baker to amend his specifications after the issuance of the Ficklen patent to include figure 3a was brought before the Commissioner of Patents on an order to show cause why the drawing in the Baker application should not be restored to its original form. Ficklen also appealed from the refusal of the Examiner of Interferences to transmit a motion to dissolve.

Mr. William II. C. Clarke, Mr. C. C. Stauffer, and Mr. George H. Gilman, for the appellant, in their brief cited:

Charney v. Clauss, 116 O. G. 597; Christenson v. Noyes, 15

App. D. C. 94; Coffin v. Ogden. 18 Wall. 120; Cooper v. Downing, 45 App. D. C. 345; Curtis v. Ledmarck, 37 App. D. C. 322; Eastman v. New York, 134 Fed. 845; Elizabeth v. Nicholson Co. 97 V. S. 126; Gilman v. Hirson, 26 App. D. C. 409; Gordon v. Wentworth, 130 0. G. 2065; Greene v. Benners, 117 O. G. 2631; Griffin v. Sivenson, 80 O. G. 919; Hassam Co. v. Consolidated Co. 215 Fed. 114; Hunter v. Miller, 50 O. G. 1765; Re Mraz, 36 App. D. C. 435; Mead v. Davis, 31 App. D. C. 590; Miehle v. Scott & Scott, 190 O. G. 1030; Robinson v. Thresher, 123 O. G. 2627; Shreve v. Grissinger, 202 O. G. 951; Silverman v. Hendrickson, 99 O. G. 445; Sydeman v. Thomas, 141 O. G. 866; Warren Bros. v. Owosso, 166 Fed. 309; Westinghouse Co. v. New York Co. 87 Fed. 882.

Mr. William J. Belknap, Mr. Joseph H. Milans, and Mr. L. S. Bacon, for the appellee, in their brief cited:

American Stove Co. v. Detroit Stove Co. 31 App. D. C. 304; Becker v. Bird, 44 App. D. C. 422; Blackman v. Alexander, 26 App. D. C. 541; Cherney v. Clauss, 25 App. D. C. 15; Coffee v. Guerrant, 3 App. D. C. 497; Cooper v. Downing, 45 App. D. C. 345; Curtis v. Lindmark, 37 App. D. C. 322; Dashiell v. Grosvenor, 162 U. S. 425; Dunkley v. Beekhuis, 39 App. D. C. 494; Eastman v. New York, 134 Fed. 845; Emerson & Yoerg v. Riley, 200 O. G. 284; Fefel v. Stocker, 17 App. D. C. 317; Foote v. Wenk, 118 O. G. 1366; Gibbons v. Peller, 28 App. D. C. 530; Herman v. Fullman, 107 O. G. 1094, 23 App. D. C. 259; Lass & Sponenberg v. Scott, 26 App. D. C. 354; McArthur v. Mygate, 31 App. D. C. 514; McKneal v. Macey, 106 O. G. 2287: Mergenthaler v. Scudder, 11 App. D. C. 264; Monte v. Dunkley, 46 App. D. C. 70; Packard v. Lacing Stud Co. 70 Fed. 66: Schmidt v. Clark, 32 App. D. C. 290; Sherwood v. Drewson, 29 App. D. C. 161; Scott v. Fisher, 145 Fed. 915; Seeburger v. Dodge, 24 App. D. C. 476; Sendelbach v. Gillette, 22 App. D. C. 168; Schreve v. Grissinger, 202 O. G. 951; Turnbull v. Curtis, 27 App. D. C. 567; Westinghouse Air Brake Co. v. New York Air Brake Co. 87 Fed. 882; Williams v. Libermann, 23 App. D. C. 223.

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

*

*

In the opinion the Commissioner, distinguishing the original specifications of the parties, said: "Ficklen's patent states expressly that the reinforcing means are supported by the concrete out of contact with the roadbed. * It is plain that claims 1, 2, and 3 are all limited to reinforcing means which are supported by the concrete out of engagement with the earth roadbed. This is the force of the clause, reinforcing means embedded in and carried by and continuing along the upper portions of the edges of the concrete sections of claim 1. Claim 2 of the patent is limited in the same way, and in addition specifies 'shoulders' formed in the concrete. Claim 3 specifies that the reinforcing means embedded in and carried by the concrete sections are set into the upper surfaces of the concrete sections. Baker's application as originally filed indicates the construction of expansion joints for concrete pavements in which the pavement or only the upper layer thereof is laid in sections with open joints between the sections.' The reinforcing plates are described as 'of suitable length and width to correspond to the cross section of the pavement.' It is proposed to place the plates in pairs suitably spaced apart upon the prepared foundations, so that their upper edges are on a level with the road and then filled in with concrete."

The Commissioner turned his decision granting Baker the right to amend his application by inserting figure 3a upon the concluding sentence in his original specification, as follows: "For the construction of expansion joints the plates are preferably made of a width to reach through the entire depth of a pavement, but it is optional to make them of lesser width where the character of the pavement permits."

In our opinion the case turns upon this decision of the Commissioner. It will not be necessary to concern ourselves with the issues of fact on the question of priority, nor are we confronted with the rule as to concurring opinions of the various tribunals of the Patent Office. In the interference proceedings, the lower tribunals adopted this decision of the Commissioner as the law of the case, and expressly refused to pass upon