For this reason, the examiner concluded that, to consider such claims now, would in effect re-open the question of an interference with the Nelson patent and, as has been stated, this view was affirmed by the Board of Appeals. A different conclusion was not reached in these proceedings because it was not satisfactorily shown to this court in what respect such action was erroneous.
Several months after the rendition of the original opinion herein, proposed findings of fact were submitted by the respective parties, and during the consideration of such proposed findings a very serious question arose in my mind as to whether or not the action of the plaintiff, or the applicant under whom claim is made, in the proceedings in the Patent Office constituted such estoppel by judgment as would preclude it from seeking the relief which it does in these proceedings respecting the claims here under consideration. A rehearing of the cause was thereupon directed, which rehearing was held on January 11, 1941. It now appears, as a result, of such rehearing, that the Patent Office, in effect, held that, between the claims of the Nelson patent and the structure disclosed by the applicant, there was such a difference that no purpose could be served by an interference proceeding to determine priority between the two. The claims here involved admittedly describe the structure disclosed by the plaintiff and admittedly show the difference which, in the proceedings in the Patent Office, were said to exist between the Nelson claims and the plaintiff's structure. To have sought an amendment to the interference proceedings by setting up the claims here involved would have, in effect, accomplished no more than to recognize the difference which, in the former proceedings in the Patent Office, were said to exist.
It is difficult, therefore, now for me to see how the failure to take such action in the interference proceedings should preclude the plaintiff from asserting his right to a patent on a structure which in those proceedings was recognized to be different. Indeed, if any estoppel at all should arise from such proceedings, it would seem that it would be to preclude the Patent Office from now asserting that the structure of the plaintiff is so like that described in the Nelson claims that an interference proceeding should have been had between the two. I am, therefore, now convinced that the action of the Commissioner of Patents in rejecting the claims here being considered on the ground of res judicata and estoppel was erroneous, and I must modify the decision in this case accordingly.
Claims 10 and 14 were rejected by the Patent Office, not only on the ground of res judicata and estoppel, but on the further ground that they were misleading and misdescriptive. So, the original disposition of those two claims in these proceedings will not be disturbed. The plaintiff will by granted the relief prayed for in these proceedings with respect to the other claims herein discussed, and denied the relief sought with respect to the remaining claims described in the bill of complaint herein.
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