
    370 F. 2d 571
    TECHNOGRAPH PRINTED CIRCUITS, LTD. AND TECHNOGRAPH PRINTED ELECTRONICS, INC. v. THE UNITED STATES; THE BENDIX CORPORATION AND THE HEWLETT-PACKARD COMPANY, THIRD-PARTY DEFENDANTS
    [No. 127-62.
    Decided December 16, 1966]
    
      
      Walter J. Blerilco, Jr., attorney of record, for plaintiffs. Walter J. Blenko and M. Victor Leventritt, of counsel.
    
      
      Michael W. Werth, with, whom was Acting Assistant Attorney General J. William, Doolittle, for defendant.
    
      James L. O'Brien, attorney of record for the third-party defendant, The Bendix Corporation.
    
      Jean 0. Ghognard, attorney of record for the, third-party defendant, The Hewlett-Packard Company. Flehr and Swain, of counsel.
    Before Coton, Chief Judge, Jones, Senior Judge, Lara-more, Davis and Collins, Judges.
    
   Per Curiam:

This case was referred to Trial Commissioner Donald E. Lane, with directions to make findings of fact and recommendation for conclusions of law pursuant to Buie 54(b) as to the issues raised by the defendant’s motion and as to the practice in the United States Patent Office in applying the Boykin Act. The commissioner has done so in a report filed J anuary 14,1966. The case has been submitted to the court on the briefs of the parties and oral argument of counsel. Since the court is in agreement with the opinion, findings, and recommendation of the commissioner, with a modification, it hereby adopts the same, as modified, as the basis for its judgment in this case, as hereinafter set forth. Therefore, defendant’s motion for partial summary judgment is denied.

Commissioner Lane’s opinion, as modified by the court, is as follows:

This patent case comes before the court on defendant’s motion for summary judgment with respect to 4 of the 12 patents asserted hi plaintiffs’ petition. On May 18, 1964, the court denied without prejudice defendant’s motion for partial summary judgment and referred the case to the trial commissioner to take evidence, as to the issues raised by the motion and as to the practice in the United States Patent Office in applying the Boykin Act. Testimony was taken in November 1964 and in J anuary 1965.

The defendant’s motion for partial summary judgment is based upon its contention that patents 2,441,960, 2,706,697, 2,886,880, and 2,904,761 were issued under tbe Boykin Act, Public Law 690, 79th Cong. 2d Sess., 60 Stat. 940, which provides that no patent granted or validated by the Act shall in any way furnish a basis of claim against the United States. It is found that said patents were not issued under the Boykin Act and are not subject to the provisions thereof.

The Boykin Act, approved August 8,1946, was enacted for the purpose of restoring, to a certain extent, priority rights which may have been lost as a result of the international communications difficulties existing during World War II. Under the then applicable statute, Bevised Statute 4887 (Title 35 U.S.C. § 32,1946 ed.), a person who had previously filed an application for patent in a foreign country within 1 year prior to the filing date of his application for a U.S. patent, could claim the benefit of the foreign filing date as his effective date of invention in the United States, provided the foreign country afforded similar privileges to citizens of the United States. The Boykin Act permitted a person who had filed application for a patent in a friendly foreign country during World War II to claim rights of priority of the foreign filing date as his date of invention in the United States, even though the foreign filing date was more than 1 year prior to the United States filing date. In return, the Act provided that the term of. any patent issued thereunder would expire 20 years from the foreign filing date and that such patent could not be the basis of a claim against the United States Government for patent infringement. The Act specifically provided that if an applicant sought the extended rights of priority he must make written request, accompanied by a copy of his foreign application, to the United States Patent Office during the pendency of the U.S. application.

The Patent Office promulgated a procedure for processing applications requesting extended priority rights under the Boykin Act. The procedure provided that the patent examiner upon the receipt of the priority request was to acknowledge the request if all the proper papers had been filed. If the patent examiner found the claims allowable, he was to proceed and examine the foreign application to determine whether the claimed invention was disclosed in the foreign application, before granting rights of priority based on the filing date of the foreign application. The procedure set forth that a supervisory examiner must approve the action granting the extended rights of priority and must approve any action withdrawing previously granted priority rights. A label was to be placed on the outside of the application file setting forth that the application had been given the benefit of the Boykin Act based upon a foreign application and that the term of the patent grant terminated 20 years from the date of the foreign filing date.

The four patents involved in the present motion resulted from an application filed in this country on February 3,1944. The patent application serial numbers and filing dates are set forth in the following table:

Appln. 520,991---Patent 2,441,960 2-3-44 5-25-4S

-Division 11,798-Patent 2,587,568 2-27-48 2-26-52

(not in suit) _Division 261,989_Patent 2,706,697 12-17-51 4-19-55

-Division 261,990_Patent 2,904,761 12-17-51 9-15-59

-Division 11,796-Abandoned 2-27-48

1-Division 290,106_Patent 2,886,880 5-26-52 5-19-59

Patent 8,^1,960

The application resulting in the ’960 patent noted that the inventor had filed three earlier applications in Great Britain concerning the same subject matter on February 2, 1943, April 3, 1943, and August 16, 1943, respectively. In July 1944, the patent examiner required the inventor to restrict his application to one invention. Shortly after the Boykin Act was passed in 1946, the inventor filed a specific request for benefits under the Act. The patent examiner did not acknowledge the request and took no action to determine if this application was entitled to priority rights under the Act. The application resulted in the ’960 patent. The ’960 patent grant did not mention the Act nor does it state that the patent term is other than the normal 17-year period. The ’960 patent does carry the phrase “In Great Britain February 2, 1943.”

Defendant contends that if the inventor fulfilled all the requirements under the Boykin Act and the printed patent in its headnote recites the first filed British application, it indicates that the patent ’960 was given the right of priority under the Boykin Act. The crucial step in determining whether a patent application is entitled to priority rights in view of a foreign application is for the patent examiner to make a positive determination that the foreign application discloses the invention claimed in the application for patent in this country. There is no evidence in the record that the patent examiner made the determination. The record is also void of any action by the supervisory examiner concerning the right of priority under the Boykin Act. The file jacket does not have a Boykin Act label pasted thereon nor does the patent heading mention the Boykin Act or that the term of the patent is other than the normal statutory grant. It is concluded that patent ’960 was not issued under the Boykin Act and is not subject to the provisions thereof.

In divisional application 11,798, the patent examiner acknowledged a request for Boykin Act benefits, required restriction to one invention, and in January 1952, wrote that the application was entitled to the foreign filing date, February 2, 1943. This 11,798 application issued as patent 2,587,568, not here in suit, but bearing the caption “Section 1, Public Law 690, August 8, 1946.” The ’568 patent not here in suit was definitely granted under the Boykin Act.

Patent 2,706,697

The application resulting in the ’697 patent shows that the inventor in May 1953 specifically requested priority rights under the Boykin Act. In February 1954, the patent examiner acknowledged the request and in January 1955 notified the inventor that this applicant was entitled to the date of his application filed in Great Britain April 3, 1943. A Boykin Act label was then affixed to the TJ.S. application file. In February 1955, the inventor asked that his request for priority rights be withdrawn since the British date April 3,1943, was not more than 1 year before the filing date, February 3,1944, of the parent application in this country. The patent examiner found that the British application filed February 2,1943, failed to include the subject matter claimed in this U.S. application and thereafter, with the supervisory examiner’s approval, withdrew the inventor’s request and crossed out the Boykin Act label on the face of the application file.

The heading of the ’697 patent makes no mention of the Boykin Act and does not indicate that this patent was granted for other than the normal 17-year term. It is concluded that patent ’697 was not issued under the Boykin Act and is not subject to the provisions thereof.

Patent 2,90^,761

The application resulting in the ’761 patent shows that the inventor requested priority rights under the Boykin Act. In October 1954, the patent examiner acknowledged said request. In August 1958, the inventor asked that his request for priority rights be withdrawn stating that the February 2, 1943, British application did not disclose the invention claimed in this TJ.S. application. In January 1959, the patent examiner noted the withdrawal. There is no Boykin Act label on the face of this application file. The ’761 patent as issued bears no reference to the Boykin Act and carries no indication that the patent was granted for other than a normal 17-year term. It is concluded that patent ’761 was not issued under the Boykin Act and is not subject to the provisions thereof.

Defendant contends that since the ’697 patent and the ’761 patent derived from divisional applications of the application S.N. 11,798 (issued as ’568 patent) and that since the ’568 patent specifically issued under the provisions of the Boykin Act, then patents ’697 and ’761 must also be considered as issuing under the provisions of the Boykin Act. Such contention misconceives the basic nature of a patent and the effect thereon of the rights of priority of the invention claimed therein. The fundamental question is: What is the date to which the claimed invention is entitled ? Unless otherwise shown by the applicant, the date of invention is the filing date of the U.S. application claiming the invention. If an application disclosure contains more than one invention made by the applicant, then the Patent Office generally requires the applicant to restrict the claims to one of the inventions.

The patent laws provide that if an applicant files additional patent applications claiming the other inventions disclosed but not claimed in his original patent application, while the original application is pending before the Patent Office, then the claimed inventions in the additional applications are entitled to the filing date of the original application as the date of invention. The additional applications are termed divisional applications. For example, if an original application A discloses three inventions and the patent examiner requires that the claims be restricted to one of the inventions disclosed therein, then the applicant may properly file divisional applications B and C, each claiming one of the remaining inventions. The inventions claimed in applications B and C can rely on the filing dates of the original applications as their dates of invention, provided applications B and C specifically refer to application A. If the applicant fails to file divisional applications claiming the inventions disclosed but not claimed in application A, during the pendency of application A before the Patent Office, then the nonclaimed inventions are dedicated to the public.

The patent laws also provide that an inventor, who has filed an application for a patent in certain foreign countries within 1 year prior to the filing date of his application for a patent in this country, may claim the date of the foreign filing as the effective date of his invention, provided that the invention claimed in his application in this country is disclosed in his foreign application. If the claimed invention of the original application is disclosed in a previously filed foreign application, it does not automatically mean that the invention claimed in a divisional application in this country was also disclosed in the foreign application. The fact that the claimed invention of the original application is entitled to rights of priority does not mean that an invention claimed in a divisional application is also entitled to the same rights of priority.

The patent examiner made a positive finding that the invention claimed in the ’568 patent was disclosed in the February 2, 1943, British application and issued the ’568 patent specifically under the Boykin Act. The patent examiner found that the invention claimed in the divisional application that matured into the ’697 patent was not disclosed in the February 2,1943, British application, but was instead disclosed in the April 3,1943, application. The application for the ’697 patent did not require the benefits of the Boykin Act. The patent examiner thereupon withdrew the application from being one under the provisions of the Boykin Act. Concerning the ’761 patent, the patent examiner made no determination that the invention claimed therein was disclosed in the February 2,1943, British application.

Defendant also contends that it has a nonexclusive royalty-free license under the ’697 patent because it was determined by the patent examiner that the application was entitled to the rights of priority under the Boykin Act and that the subsequent withdrawal of the request, with the approval of the patent examiner, could not revoke the license given the defendant. The Boykin Act provides: “That no patent granted or validated by reason of any such extension [in rights of priority] shall in any way furnish a basis against the Government of the United States.” Neither patent ’697 nor ’761 was granted with any rights of priority under the Boykin Act. Defendant acquired no express or implied license under either the ’697 or the ’761 patent. For similar reasons, defendant errs in asserting that it acquired a license to use all inventions disclosed in the specification of the ’568 patent (issued under the Boykin Act), including the claims later made in the ’697 and ’761 patents. The Boykin Act does not extend to inventions which may be disclosed in a patent issued under that Act, but which are not claimed therein.

Patent 886,880

Tlie application resulting in the ’880 patent shows that the inventor specifically requested priority rights under the Boykin Act. The inventor had previously requested priority rights in the parent application S.N. 11,796, and the patent examiner granted that request but the inventor abandoned said application after the United States Court of Customs and Patent Appeals upheld the patent examiner’s rejection of claims as not being patentably distinct from the claims in the ’960 patent. In the application resulting in the ’880 patent the patent examiner never acknowledged the inventor’s request for Boykin Act priority benefits, and in August 1953 the inventor specifically withdrew the request. The heading of the ’880 patent bears no reference to the Boykin Act and carries no indication that this patent was granted for other than a normal 17-year term. It is concluded that patent ’880 was not issued under the Boykin Act and is not subject to the provisions thereof.

The defendant asserts that since patent ’880 derived from a divisional application of application S.N. 11,796 (now abandoned) which was afforded the priority date of February 2, 1943, under the the Boykin Act, then the ’880 patent must be considered an issuing under the Boykin Act. The Patent Office found that the invention claimed in application S.N. 11,796 was disclosed in the February 2, 1943, British application and therefore entitled to the rights of priority under the Boykin Act. The Patent Office did not make a determination of whether the claimed invention in the ’880 patent was disclosed in said British application and therefore could not have issued the ’880 patent under the Boykin Act.

Summarizing, it is found that patents 2,441,960, 2,706,697, 2,886,880, and 2,904,761 were not issued under the Boykin Act and are not subject to the provisions thereof.

It is my conclusion and recommendation that defendant’s motion for partial summary judgment be denied by the court and that this case be returned to the commissioner for proceedings on the merits.

FINDINGS OF FACT

1. This is a patent suit under 28 U.S.C. § 1498 for reasonable and entire compensation for the alleged unlicensed use of inventions relating to methods of making electrical “printed” circuit components described and claimed in U.S. Patents 2,441,960, 2,634,310, 2,662,957, 2,666,254, 2,706,697, 2,747,977, Ee. 24,165,2,728,256, 2,874,360, 2,886,880,2,904,761, and 3,002,260. A motion to dismiss the cause of action based upon patent Ee. 24,165 was allowed. On December 17,1962, defendant moved for partial summary judgment as to the Eisler patents 2,441,960, 2,706,697, 2,886,880, and 2,904,761 upon the ground that the patents are subject to the provisions of the Boykin Act, Public Law 690, 79th Cong., 2d Sess., 60 Stat. 940, which imposes the restriction that the patents issued thereunder shall not—

* * * in any way furnish a basis of claim against the Government of the United States.

On May 18, 1964, the court entered an order denying the motion without prejudice and referred the case to the trial commissioner—

* * * to take evidence as to the issues raised by the motion and as to the practices in the Patent Office in applying the Boykin Act, with the report of the trial commissioner to be filed pursuant to Eule 54(b).

2. Pursuant to the court’s order of May 18,1964, evidence was taken on the 23d and 24th days of November 1964 and on the 4th and 7th days of January 1965 on the issues raised by the motion for partial summary judgment.

3. The Boykin Act was enacted August 8, 1946, to temporarily extend the rights of priority beyond that permitted under Section 4887 of the Eevised Statutes (Title 35 U.S.C. § 32,1946 ed.), as amended. E.S. 4887 provided that a person who had previously filed an application for a patent in a foreign country within 1 year prior to the filing date of his U.S. application, could claim the benefit of the foreign filing date as his effective date of invention in the United States, provided the foreign country afforded similar privileges to citizens of the United States pursuant to the International Convention for tlie Protection of Industrial Property, 53 Stat. 1748. E.S. 4887 also provided that if the foreign application was filed more than 1 year prior to the U.S. filing date and if the foreign application matured into a patent prior to the issuing of a U.S. patent, the applicant was barred from obtaining a U.S. patent for the invention. The Boykin Act was enacted in 1946 for the purpose of restoring priority rights which may have been lost as a result of international communication difficulties existing during World War II. The Act liberalized the 1-year requirement and permitted a person who had filed application for a patent in a friendly foreign country during World War II to claim the benefit of his foreign filing date as his effective date of invention in the U.S., even though the foreign filing date was more than 1 year prior to the U.S. filing date. For a U.S. patent issued under the Boykin Act, the term of the patent grant was 20 years from the foreign filing date, but not to exceed 17 years from the issue date of the U.S. patent. The Act further provided that patents issued under the Act could not be the basis of claim against the Government of the United States. If an applicant for a U.S. patent sought to obtain the benefits arising under the Boykin Act, he must file a written request, accompanied by a copy of the foreign application, with English translation if required, in the United States Patent Office during the pendency of the U.S. application. The question before the court is: Were U.S. patents 2,441,960, 2,706,697, 2,886,880, and 2,904,761 issued under the Boykin Act?

Patent Office Practice

4. A proper and complete application for a United States patent consists of a petition requesting the grant of a patent, a specification setting forth what the applicant considers to be his invention including one or more claims particularly pointing out the boundaries of his invention, a drawing when appropriate, a filing fee, and an oath. The applicant is required to state in the oath whether he has previously filed an application for a patent in a foreign country concerning the same or like subject matter, and if so, when and where.

5. When an application is received in the United States Patent Office it is processed through, several clerical divisions where the application papers are checked to determine if the required papers are present. The application is given a serial number and a filing date. The application papers are placed in a jacket of heavy paper known as a “file jacket” or “file wrapper.” Identifying information including notations of foreign patent applications is made upon the outside of the file wrapper.

6. If the application file is complete, the application is then referred to an examining division where it is assigned to a patent examiner for examination. The examiner surveys the patent specification to determine whether it is in proper form, examines the description of the invention to determine if it is adequately descriptive, and examines the claims to determine whether the invention set forth in the claims is patentable.

7. After examining the application, the patent examiner may allow the application with one or more claims or he may reject it, pointing out the defects in the application or how the claimed invention is not patentable in view of the prior art. The applicant may then respond by argument or amendment. The process is repeated until either the claims are allowed or an impasse is reached.

8. All correspondence between the Patent Office and the applicant is placed within the file wrapper. After the patent issues, the file wrapper is made available for inspection by the public at the Patent Office.

9. In order to show that a claimed invention is not patentable, the examiner refers to the prior art. Unless otherwise shown by the applicant, the date of invention in the United States is the filing date of the United States application. It is many times advantageous -for the applicant to obtain a priority date prior to the date of filing in the United States. If the applicant had filed an application for a foreign patent within 1 year from the U.S. filing date, the applicant was permitted to claim the foreign filing date as his effective filing date in the United States, thereby removing intervening references. If the foreign application was filed more than 1 year prior to the U.S. filing date, the applicant was unable to claim tlie foreign filing date unless tbe application was brought within the confines of the Boykin Act.

10. In order to obtain the benefit of a foreign filing date, the subject matter which the applicant is claiming in his U.S. application must be disclosed in the foreign application.

11. On June 9', 1949, the Patent Office published the first edition of the Manual of Patent Examining Procedure to supplement the patent statutes and rules and to collect into one document Patent Office directives and commissioners’ orders. Section 201.16 of the Manual dealt with the Boykin Act and provided that when an application requested priority rights under the Boykin Act, the papers should first be examined for formal compliance with the statute and notification sent to the applicant that the papers complied therewith. Determination of whether the claims were for the same invention as that disclosed in the foreign application was not to be made by the patent examiner until the U.S. application was ready for issue. Section 201.16 (u) provided that the examiner should submit the request for the benefits of the Boykin Act to the supervisory examiner for review and approval before the applicant was notified that his request was granted. Section 202.03 provided that where an applicant acknowledged a prior foreign application, the country where filed and the date of filing were to be noted at the bottom of the face of the file wrapper. If the application was given the benefit of the Boykin Act, a label was to be placed over the foreign filing notation which stated the applicability of the Boykin Act and the expiration date of the patent grant.

12. In the preparation of printed copies of United States patents the Patent Office has followed different procedures in referring to foreign applications in the patent heading. Prior to 1953 the notation of prior foreign application located at the bottom of the file wrapper was generally printed in the patent heading even though the foreign filing date was more than 1 year prior to the U.S. filing date. After 1953 the practice changed and the Patent Office generally identifies in the patent heading, only the foreign application upon which priority is claimed and granted. When a patent issued under the Boykin Act, the heading of the patent made reference to the Boykin Act and the foreign application. It further stated the expiration date of the patent grant.

13. It was customary during the period the Boykin Act was effective for patent attorneys who filed applications in the United States, based upon foreign applications filed during World War II, to specifically request benefits under the Boykin Act by filing the necessary papers. If during the prosecution of the U.S. application it appeared that the foreign application would not mature into a patent prior to the U.S. application issue date or that the eventually allowed claims did not read upon the foreign application, the patent attorney would ask for the withdrawal of his prior request for Boykin Act privileges. After a request for the rights of priority under the Boykin Act had been granted by the patent examiner it could be withdrawn by the applicant only with the approval of the supervisory examiner.

Patent $60

14. The original application (S.N. 520,991) was filed in the United States on February 3, 1944. The oath made reference to three applications previously filed in Great Britain: No. 1749/1943, filed February 2, 1943, No. 5379/ 1943, filed April 3, 1943, and No. 13235/1943, filed August 16, 1943. On July 13, 1944, the patent examiner required the applicant to restrict his claims to only one of the several inventions disclosed therein. The Boykin Act was enacted on August 8, 1946, and on December 12, 1946, the applicant specifically requested rights of priority under the Boykin Act based on his applications in Great Britain. The record for application S.N. 520,991 is bare of any actions taken by the patent examiner concerning the applicant’s request. The patent examiner did not acknowledge that the request had been made nor is there any indication that any action was taken to determine whether the applicant was entitled to rights of priority under the Boykin Act. There is no label on the outside of the file jacket indicating Boykin Act applicability. The application issued as patent 2,441,-960 on May 25,1943, hereinafter referred to as parent patent ’960. The patent heading contains the phrase “In Great Britain. February 2,1943.” There is no mention of the Boy-kin Act in the issued patent or that the term of the patent grant is other than the normal statutory 17 years.

Patent $¡,587¿568

15. Divisional application Serial No. 11,798 was filed by the applicant on February 27,1948, claiming subject matter disclosed but not claimed in patent ’960. Accompanying this application was a request for rights of priority under the Boykin Act. On January 24,1948, the patent examiner acknowledged the request and stated that a determination of whether the claims therein were for the same invention had not been made. The patent examiner required that the applicant restrict the application claims to one of the inventions contained therein. On January 2, 1952, the patent examiner stated that the application was entitled to the rights of priority of February 2, 1943, under the Boykin Act. The application issued as patent 2,587,568 on February 26, 1952. The patent heading recites “Original application February 3, 1944, Serial No. 520,991. Divided and this application February 27, 1948, Serial No. 11,798. In Great Britain February 2,1943. Section 1, Public Law 690, August 8, 1946. Patent expires February 2, 1963.” Patent ’568 is not here in suit.

Patent 2,706,697

16. Divisional application Serial No. 261,989 filed by the applicant December 17, 1951, claimed subject matter disclosed but not claimed in patent ’568 which is in turn a division of the patent ’906. On May 11, 1953, the applicant specifically requested rights of priority under the Boykin Act. The patent examiner acknowledged this request on February 5, 1954, without determining applicant’s right to priority under the Act. On January 30, 1955, the patent examiner, with the approval of his supervisory examiner, notified the applicant that the application was entitled to the priority date of his application in Great Britain, No. 5379/1743, filed April 3, 1943. A label was placed on the outside of the application file jacket stating that the Boykin Act was applicable. On February 3, 1955, the applicant pointed out that the Boykin Act was no longer required because April 3, 1943, fell within the 1 year from the date of the filing of the original U.S. application on February 3, 1944, and asked that his request for rights of priority under the Boykin Act be withdrawn. On February 25, 1955, the patent examiner notified the applicant that it had found that his application in Great Britain, 1749/43, filed on February 2, 1943, did not include the subject matter claimed in his U.S. application Serial No. 261,939, but that his British application 5379/43, filed April 3, 1943, did. The patent examiner specifically withdrew the applicant’s request for rights of priority under the Boykin Act. The supervisory examiner approved the withdrawal. The label on the outside of the application file jacket was crossed out. The application issued as patent 2,706,697 on April 19,1955. The patent heading made reference to the parent patent ’960 and patent ’568, but did not refer to the applications filed in Great Britain. The heading has no indication that the term of the patent grant is other than the normal 17 years from the issue date.

Patent %$04,761

17. The applicant also filed on December 17,1951, a second divisional application Serial No. 261,990 which claimed certain subject matter restricted from the application for patent ’568. On May 6, 1953, the inventor requested the benefits of the Boykin Act for this application. The patent examiner on October 28,1954, acknowledged applicant’s request, but reserved the decision of whether the claims were for the same invention as disclosed in the foreign filed applications. On August 1, 1958, the applicant asked that his prior request to place the application under the provisions of the Boykin Act be withdrawn because the subject matter of this application was not supported by the British application 1749/1943, but that it was supported by the disclosure of the British application 5379/1943. On January 20, 1959, the patent examiner noted the applicant’s withdrawal of his prior request. There is no Boykin Act label on the face of the file jacket. This application issued as patent 2,904,761 on September 15, 1959. The patent beading made reference to the U.S. application that matured into parent patent ’960 and patent ’568 but did not make reference to the British applications. There is no indication in the heading that the term of the patent grant is other than 17 years from the issue date nor is the Boykin Act mentioned.

Patent 8,886,880

18. Divisional application Serial No. 11,796 was filed by the applicant on February 27, 1943, as a division of the original application that matured into patent ’960. Accompanying the application was a specific request for rights of priority under the Boykin Act. On February 1, 1949, the patent examiner acknowledged this request. The patent examiner required the applicant to restrict the claims of this application to one of the inventions disclosed therein. On January 18, 1952, the patent examiner approved applicant’s request for rights of priority under the Boykin Act. A label was pasted on the outside of the file wrapper indicating the applicability of the Boykin Act. The Patent Office and the United States Court of Customs and Patent Appeals found that the claims retained in this application were not patentably distinct from those of patent ’960. Application of Eisler, 203 F. 2d 726, 40 CCPA (Patents) 913 (1953). The application became abandoned soon after April 15, 1953.

19. Divisional application Serial No. 290,106 was filed by the applicant on May 26, 1952, claiming subject matter restricted from now abandoned application Serial No. 11,796, discussed in the preceding finding, which was a divisional application of the original application that matured into patent ’960. On May 7, 1953, the inventor specifically requested rights of priority under the Boykin Act with reference to his February 2,1943, British application. The patent examiner did not acknowledge this request for rights of priority under the Boykin Act, and on August 4, 1958, the applicant withdrew his request. The Patent Office issued the application as patent 2,886,880 on May 19,1959. The patent heading refers to the now abandoned application Serial No. 11,796' and to patent ’960, but does not mention the British applications. There is no indication in the heading that the term of the ’880 patent grant is other than the normal 17 years from the date of issue nor does it mention the Boykin Act.

20. In Technograph Printed Circuits, Ltd. v. Bendix Aviation Corp., 218 F. Supp. 1, 5, 137 USPQ 725, 729 (D.C. Md. 1963), affirmed, 327 F. 2d 497, 140 USPQ 285 (4th Cir. 1964), cert. denied, 379 U.S. 826, the district court held that patents ’960 and ’697 were granted for the normal statutory term of 17 years. Patents ’880 and ’761 were not there in suit.

21. In summarizing findings 1-20, it is found that U.S. Patents 2,441,960, 2,706,697,2,886,880, and 2,904,761 were not granted under the Boykin Act and are not subject to the provisions thereof. 
      
      Tlie opinion, findings of fact, and recommended conclusion of law are submitted pursuant to order of tlie court under Rule 54(b).
     