
    THE UNITED STATES EX REL. HORACE H. BIGELOW, vs. JOHN M. THACHER, COMMISSIONER OF PATENTS.
    I. An application for a patent was put in interference with a party to-whom a patent had been previously issued. On the testimony in the interference case it was contended that the applicant had abandoned his invention to the public use, and the Commissioner referred the question o f such abandonment back to the primary examiner; and it was held that mandamus would not lie to compel the Commissioner to allow the patentee to take an appeal from the decision of such primary examiner to the board of examiners-in-chief.
    II. A writ of mandamus will not be allowed against the Commissioner of Patents, where the law submits the subject to his opinion. — Cartter,. Ch. J.
    
    III. Where an interference is declared in the Patent-Office, the examination is to be confined to “priority of invention.” — Wylie and MaoArthur, JJ.
    
    IV. It is not the intention of the patent law that, on a question of interference, the examiner in charge of interferences should consider a question of abandonment.— Wylie and MaeArthur, JJ.
    
    V. The Commissioner of Patents may suspend, temporarily, proceedings. in interference, when the evidence used therein tends to show that the first inventor, who is also the applicant, had abandoned his invention before applying for a patent, and to refer the application back to the primary examiner to ascertain the fact of such abandonment. — MaeArthur, J.
    
    Olin, J., dissenting’.
    STATEMENT OP THE CASE.
    This is an application for a mandamus, to be directed to the-Commissioner of Patents, requiring him to allow the relator an appeal from a decision made by one of the primary examiners in the Patent-Office j and arises upon the following statement of facts:
    A patent was granted to Bigelow, the relator, on the 5th of July, 1870, for an improved machine to make heels for boots and shoes. On the 8th day of August, 1871, Stephen W.. Baldwin made application for a patent for a similar machine y and on the 12th of April, 1872, an interference was declared between this application and the unexpired patent to Bigelow.
    The examiner in charge of interferences decided that Baldwin was the prior inventor of the machine in controversy, which decision was made in July, 1874. From this decision Bigelow took an appeal to the examiners-in-chief, who, in October following, confirmed the decision of the primary examiner, by awarding priority of invention to the said Baldwin ; but they called attention to the fact that the testimony before them on the interference indicated that Baldwin had abandoned his invention, and recommended that the question of such abandonment be referred to the proper tribunal for decision. Their language on this subjectis: “ Upon this point we are not called upon to form a decision, but we are clearly of opinion that it should be considered by the proper tribunal.” This recommendation was accepted by the Commissioner, and thereupon he referred Baldwin’s application back to the primary examiner for further examination on the matter suggested by the board.
    The order of the Commissioner on that occasion reads as follows:
    “In the matter of the interference between the application of Stephen W. Baldwin and patent of Horace H. Bigelow, improvement in machine for making boot and shoe heels.—
    “The examiners-in-chief have in their decision awarded priority of invention to Baldwin, but have recommended the reference of his application to the principal examiner for a determination of his right to a patent in view of certain testimony affecting the question of abandonment by reason of public use. In accordance with this recommendation, the application of Baldwin is hereby remanded to the primary examiner for consideration in the matter referred to above, pending which, further proceedings in the interference case are suspended.”
    The primary examiner, to whom this reference was made, upon examination of the testimony, rendered his decision on the 8th day of November, 1874, to the.effect that said Baldwin had not lost or forfeited his right to a patent by reason of a public use of the said invention more than two years before making application therefor, and consequently that he was entitled to a patent.
    On the 2d day of December, 1874, the relator rendered an appeal from the last-mentioned decision of the examiner to the examiners-in-chief, which appeal the Commissioner of Patents refused to allow or entertain, and he now asks the court to compel the Commissioner to allow him such an appeal.
    The relator sets forth in his petition that the invention is one of great value and importance, and has been in extensive public use by him, under his letters-patent aforesaid, for over a period of four years, and that unless he can have an appeal from said decision, letters-patent will be issued to Baldwin for the same invention, and that he will have no opportunity to contest Baldwin’s right to a patent before the board of examiners-in-chief or the Commissioner of Patents, and that he will be liable to be sued by Baldwin .if he continues to use said invention. He also alleges that he is without adequate remedy unless by the writ of mandamus.
    The 42d section of the patent law of 1870 enacts: “That whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the primary examiner to proceed to determine the question of priority of invention.
    
    And the Commissioner may issue a patent to the party who shall be adjudged the prior inventor, unless the adverse party shall appeal from the decision of the primary examiner or of the board of examiners-in-chief, as the case may be, within such time, not less than twenty days, as the Commissioner shall.prescribe.”
    The last clause of the 41st of the printed rules of practice in the Patent-Office provides that, “in the trial of interferences the questions of priority of invention and of patent-ability may be inquired into, as well as the questions of abandonment and public use.” And the 51st of said rules contains a similar provision. It was argued on the hearing that the rules just mentioned were unauthorized by law and void.
    These are all the facts necessary to understand the points passed upon by the court.
    
      J. J. Coombs and A. Pollok, for the relator, contended :
    That it had always been the practice in the Patent-Office to allow an appeal by either party in a case of interference. That an interference had been declared between the application of Baldwin and the patentee, and upon the testimony used before the examiners-in-chief in such’ case, the Commissioner had referred the subject of abandonment by Baldwin of his invention, for a period of two years before he applied for his patent, to the primary examiner; but it was the same case, and the same testimony was used, which had been before the examiners-in-chief. That whenever an interference is declared, the two parties are placed in opposition to each other, and either of them may show any good reason why the other should not have a patent, and the evidence taken in the interference case being referred to the examiner, the decision of the latter was a decision in an interference case, .and the law is explicit that in the matter of interference either party may appeal from the decision; and we ask that the Commissioner shall be compelled to allow our appeal, made in this interference case on a material question involved in it, and which was decided against us. If we are right — and of that we entertain not the slightest doubt— that this decision is made in an interference case, then the law is clear that we have a right to appeal, and there is no discretion or judgment to be exercised by the Commissioner in granting it. It is the purest ministerial act that can be imagined, as will be seen by reference to the 42d section of the patent law.
    
      Marcus S. Hopkins, for Commissioner of Patents:
    In the course of proceedings in the interference, testimony was taken which appeared to raise the question of abandonment of the invention by Baldwin. When the board, in the course of their investigation of the question of priority in issue between the parties, noticed this testimony, which they could not decide upon, and which, as a matter of course, the primary examiner had not decided upon, for the reason that when he made his decision in favor of the patentability of Baldwin’s application, (except as to priority,) it had not been taken, and was not before him, they very properly recommended that it be placed before him for his consideration and decision upon it. It was new light, that might be sufficient to wholly defeat Baldwin’s application, and render further proceedings in interference needless. If it had been in existence or available when the examiner originally made his examination and decision, he would then have passed upon it, and if he had passed favorably, that would have been an end of the matter, and the interference on the issue of priority would have proceeded undisturbed. Coming before the office, as it did, as an incident connected with an interference, and having never had consideration by the primary examiner, it was proper that proceedings in interference be temporarily suspended to enable it to have such consideration. It was precisely as if an alleged new reference (an old English patent, for instance) had been discovered in the course of proceedings in the interference.
    The Commissioner was obliged to take notice of it, and he did so in the only lawful and proper way he could. It was not addressed to the issue in the interference, and it could not be properly disposed of in the interference. If sufficient to prove abandonment on the part of Baldwin, it might, it is true, have caused, the proceedings in interference to be quashed by destroying the standing of one of the parties. And the fact that it was developed in the course of an interference is of no consequence whatever. If it had been developed elsewhere, or in any other way, it would have had precisely the same force, and would have been treated by the Commissioner in the same manner. It is the business of the Commissioner to take cognizance of any facts coming to his notice with the force of legal evidence, from any source whatever, tending to show that an alleged invention is old, or is not useful, or has been abandoned to rightful use by the public. No matter at what stage of proceedings short of the actual execution of a patent such facts or evidence may come to his attention, or from what source, it is his duty to refer them to the proper tribunal for consideration. They are newly-discovered evidence to the office, warranting a new hearing. But the party who may furnish such evidence or direct attention to it does not thereby become entitled to be made a party to the proceedings upon it in the office, because the law does not contemplate such a privilege to him.
    ÍTow, the relator, Bigelow, finding from the evidence introduced by Baldwin (upon whom rested the burden of proof) that Baldwin was the prior inventor, and that he, Bigelow, must inevitably fail in the issue of priority which was to be tried, determined to interpose the obstacle of abandonment, and prevent the issue of Baldwin’s patent by that means if possible.
    Baldwin, apparently not fearing such an assault, and relying upon the rebutting testimony he could and did produce, made no objection to the testimony relating to abandonment, and so it was before the office.
    But not being, as I think I must have abundantly satisfied the court, pertinent to the issue of priority of invention, which is the only issue upon which the relator, Bigelow, can have any standing as a party litigant, and referring solely to the validity of the ex parte application of Baldwin, how can it give the relator a right to appeal ? T submit that because he has an interest to defeat Baldwin’s application, and because he has furnished the Patent-Office information which he hoped would accomplish that object, are no sufficient reasons for admitting him as a party to oppose that application before the office, by way of appeal from a decision of the primary examiner on Baldwin’s application favorable to Baldwin.
    The Commissioner, under the law and the established practice of the office, correctly refused to entertain such an appeal. If allowed by the court, it will be a precedent for ■admitting contestants in ex parte cases, and will greatly add to the difficulties inventors must encounter in obtaining patents, which are already great enough.
    That the question of abandonment, raised upon facts developed in an interference case, is purely an ex parte one, has been established by recent decisions of the Commissioner, and by the decision of this court in the case of Joshua A. Gray.
    In the case of Jenkins vs. Barney and Berry, (Commissioner’s Decisions, 1873, p. 21,) the Commissioner said the question of abandonment is " an ex parte question,” upon which “ an appeal may be taken to the supreme court of the District of Columbia.” * * * " The questions of abandonment and priority of invention are entirely distinct and separate questions.”
    At the conclusion of the argument, the judges delivered oral opinions to the following effect:
   Cartter, Ch, J.:

A majority of the judges are of opinion that we cannot issue this writ. If the matter referred back to the primary examiner is a separate examination into an application for a patent, clearly Mr. Bigelow has no right to appear there. The law makes it ex parte, and the only person that can be heard is the applicant for the patent. If the proceedings before the examiner is without authority, there is no appeal,, because that officer has no power in the premises. You do not ask the court to require the Commissioner to take up an appeal to himself from the decision of the examiners-in-chief, for they have already acted. If he refused to entertain such an appeal, the writ of mandamus would be an appropriate process to compel him. The application is not made in that connection. The argument is that an interference has been declared, and that, therefore, the decision of the primary examiner is in an interference case, so that the court is asked to regard an ex parte application as an application in interference. There has been some discussion as to what an interference means, and there is a wide discrepancy between the counsel on that subject; one side claiming that it embraced everything that entered into the right of an applicant for a patent, and on the other side that it is only an inquiry as to who is the prior inventor; but I think that point is not involved in this question. The trouble is that you have applied for a writ of mandamus where the law submits the subject to the opinion of the Commissioner of Patents, and that is conclusive with me that the writ cannot issue.

Mr. Justice Wylie said:

It is a settled principle that mandamus will issue requiring an officer to perform-a ministerial duty which involves no exercise of discretion under the law. The conflict of opinion which we see exhibited in this case shows that the matter in controversy is one which requires not only the exercise of discretion, but is a subject of real difficulty in regard to how the duties of the Commissioner in the premises are to be performed.

The law says that the Commissioner of Patents, when in his opinion an application for a patent interferes with any pending application, or with any other patent already granted, may declare an interference. In such case the investigation is to be confined to priority of invention. It is conceded that Baldwin was the prior inventor; but Bigelow has got the patent, and he says that Baldwin ought not to have his, because he used his invention publicly so as to abandon it to the public, and he wants an interference to show that Baldwin has so abandoned his invention. Baldwin was the original inventor, and he is, therefore, entitled to a patent, and when that issues, the contest will be transferred from the Patent-Office to the courts, which is the exact position the law intended the parties should occupy in cases of this kind. I have no idea that it was the intention of the law-makers that on a question of interference the office should go into this question of abandonment. It is true that the 51st rule of the Patent-Office allows that to be done; but it is still a matter of discretion even under the rule. The Commissioner may permit it, or he may not. I do not think he has any right to establish such a rule, but even if he has such right, it is discretionary with him to allow evidence of this kind in a case of interference. If he has the right to enlarge the scope of inquiry, he can as well restrict it. He has a right to dissolve the interference or any part of it; and if the'examination on the question of abandonment has gone far enough, he can stop it there. Upon the whole, I have never seen an application for a mandamus which involves so many doubtful questions, and the exercise of so much discretion in regard to the patent law. .The mandamus should be denied.

Mr. Justice MacArthur said :

I am of the same opinion, although I confess it is with considerable diffidence I approach the construction of the patent law. It is well established that a mandamus will not issue to control the judgment or discretion of the officer to whom it is to be directed, and it is quite apparent to my mind that the Commissioner of Patents, in suspending temporarily the proceedings in interference, and referring Baldwin’s application back to the primary examiner, has exercised a prudent and discreet judgment. The decision of the examiner was not made in the interference case, and could not be made in the interference case, for the simple reason that the law directs all decisions in that proceeding to be rendered by the examiner in charge of interferences. He is au officer designated for the very purpose by the statute. Now, an interference had been declared by the Commissioner between these two inventors, and the examiner in charge of interferences, and afterward, on appeal, the examiners-in-chief, decided that Baldwin was the prior inventor. But in the testimony used in this proceeding some circumstances were developed calculated to show that Baldwin had abandoned his invention to the public use before he applied for a patent. The Commissioner is invested with the general superintendence of the Patent-Office, and the primary examiners seem to be placed peculiarly under his direction; and he can assign to them any duty in the examination of patents which the exigencies of the office demand. It appears that when the suggestion was made upon the testimony in the.interference case that Baldwin had abandoned his invention, he very properly sent that question back to the primary examiner. Whether Baldwin abandoned his invention is a question which belongs to his original application, and the primary examiner should see to and determine this point. It enters into the patentability of the improvement as much as its usefulness or novelty, and these matters ought to be settled before an interference is declared or a patent issues. And if it becomes apparent at any stage of the proceeding that the invention is defective in any of these particulars, the Commissioner, by virtue of his general power of managing tlie business of the office, ought to direct a suitable examiner to inquire into that fact, just the same as upon an original reference of an application for the patent, and to have it determined as a preliminary or ex parte question. Bigelow claims that he is a party to the question of abandonment by virtue of this interference. He might as well say that he was a party to the original application. The Commissioner and the ■examiners may avail themselves of all sources of information upon an application for a patent, but no one would claim that persons who have made useful communications to these officers would have a right to become parties, in the sense of a party, as we understand the term.

I am, therefore, clearly of opinion that this proceeding before the primary examiner was ex parte, and that Bigelow had no right of appeal. The only case in which he was prop■erly a party was on the question of priority of invention. I entirely agree with my brother Wylie that priority of invention is the only question that can be heard or determined upon an interference. The statute confines the inquiry to that point, and that is the only subject in the whole patent law that can be litigated in the office by opposing parties, unless it is in applications for extension. Abandonment of an invention is in the nature of things an entirely different affair, and cannot be confounded with u priority of invention,” without disregarding the plainest distinctions, both in language and law.

Mr. Justice Orín,

dissenting, said:

I cannot concur in the enunciation of the law that a mandamus cannot issue when an officer misunderstands the law. If the law be difficult of comprehension, the court is to construe it, and if the officer does not comply with the directions of the court, a mandamus will issue. I think the rule of the Patent-Office authorizing the examiner to consider the question of abandonment was right and proper. An interference was declared, in which it was right to consider whether, although Baldwin was the prior inventor, he had not abandoned his invention to public use, and thereby forfeited his title to a patent. In this question Bigelow had an interest, and the evidence shows that he had probably a right to his. patent, and that Baldwin had not, by reason of his having abandoned his invention. To get rid of that testimony, a reference is made to the primary examiner on a question of abandonment, an ex-parte proceeding, in which nobody can be heard but Baldwin. That is an easy way to dispose of' Bigelow’s interest, but it looks to me like a mere dodge. That* is the way it impresses itself upon my mind.  