
    IN RE WICKERS AND FURLONG.
    Patents ; Patentability.
    1. Two valid patents may not be issued to a party, based upon the same patentable invention.
    2. In a ease where a party whose application is involved in a pending interference presents another application based upon the invention involved in the interference, he will bo refused a patent upon the later application until the interference has terminated.
    3. Where, on an appeal from a decision of the Commissioner of Patents rejecting' an application for a patent, it appears that the invention is the subject-matter of a pending interference between the applicant and another, quwre, whether affidavits presented by the appellant for the consideration of this court, controverting the sufficiency of the disclosure in the application of his rival, should be considered, or whether that question should come before this court upon testimony taken in the interference proceedings.
    4. This court will hesitate to differ from the expert tribunals of the Patent Office where they have all concurred in holding that the claims of an application for a patent are for the same invention as other claims of the applicant, which are involved in a pending interference proceeding.
    No. 401.
    Patent Appeals.
    Submitted Jauary 11, 1907.
    Decided February 5, 1907.
    Hearing on an appeal from a decision of the Commissioner of Patents rejecting an application for a patent.
    
      Affirmed.
    
    The facts will be found stated in the opinion.
    
      
      Messrs. Griffin & Bernhard for tbe appellant.
    
      Mr. Fairfax Bayard for tbe Commissioner of Patents.
   Mr. Justice

McOomas delivered the opinion of the Court:

In this case, upon the application of Walter J. Wickers and' Patrick M. Furlong for a patent for an improvement in process of making printing plates, filed March 1, 1905, these applicants appealed from the decision of the principal Examiner rejecting the claims of the application on the issues of three interferences in which certain applications of these appellants were involved. These interferences are Wickers v. Weinwurm, No. 23,741; Wickers v. McKee, No. 22,404 (No. 388 Patent Appeal Docket) [ante, 25]; and Wickers v. McKee, No. 22,405 (No. 389 Patent Appeal Docket) [ante, 28], The Examiner rejected certain claims on a British patent to Weinwurm, No. 14,508 of 1901. The Examiners-in-Chief affirmed the Examiner in refusing to allow the claims brought before them upon appeal, holding 'that the issues in the aforenamed interferences, when considered together, substantially covered the real invention of this application of Wickers and Furlong, and suggesting doubt if these appellants can obtain a valid patent if the decisions in these interferences be adverse to them. ■ Wickers and Furlong appealed to the Commissioner of Patents from this decision of the Examiners-in-Chief affirming the rejection by the Primary Examiner of the following claims:

“1. The method of making printing plates which consists in photographing the subject to be printed on the front and on the back of a metallic plate, such photographs being in register with each other; etching both surfaces of the plate; and deflecting the metal of the plate from the printing face toward the back, and producing a graduated printing surface on the front of the plate.
“2. The method of making printing plates which consists in photographing a'subject to be printed on the respective faces of a sensitized plate; etching both faces of said plate; and subjecting the plate to pressure to cause elevations and depressions to appear in the printing surface of the plate.
“3. The method of making printing plates which consists in sensitizing both faces of a metallic plate; producing photographic prints on the respective faces of said plate; and pressing the plate to cause elevations and depressions to appear in the printing surface of said plate.
“4r. The method of making printing plates which consists in sensitizing both sidos of a metallic plate; exposing said plate and a negative to the light, and producing photographic prints in register with each other on the respective faces of said plate; etching both surfaces of the plate, and forcing the metal from the front toward the back of the plate to cause elevations and depressions to appear in the printing surface of the plate.
“5. The method of making printing plates which consists in photographing a subject on the respective faces of a metallic plate; producing in the back of the plate elevations and depressions at predetermined places where the printing is to be respectively light and heavy; and subsequently producing similar depressions and elevations in the printing surface of the plate by pressing forward the elevations produced in the back of the plate.
“6. The method of making printing plates which consists in photographing a subject on the respective faces of a metallic plate; etching both faces of the plate, and producing on the back thereof elevations and depressions at predetermined places where the printing is to be respectively light and heavy, and pressing the plate to cause such elevations and depressions to appear in the etched front of the plate.
“7. The method of making printing plates which consists, in photographing a subject on the respective faces of a metallic plate etching the front of the plate; etching portions of the back of the plate deeper than the front thereof, and producing elevations and depressions on the back; and deflecting the metal of the plate to cause the elevations and depressions of the back to appear on the etched front plate.
“8. The improvement in the art of preparing printing plates which consists in etching a picture of a subject on both sides ■of a metallic plate, and successively etching the back of the plate to produce thereon surfaces in different levels corresponding to the lights and shadows of the subject.
“9. The improvement in the art of preparing printing plates, which consists in successively etching away various portions of a picture of a subject on the back of a metallic plate to various depths, thereby producing thereon surfaces in different levels •corresponding to the lights and tones of a picture on the face.
“10. The improvement in the art of preparing printing-plates which consists in producing on the back of a plate a picture of a subject to be printed; and then subjecting the back of the plate to successive etchings to produce thereon elevations and depressions at predetermined places opposite to the places on the face where the printing is to be respectively light and heavy.
“11. The improvement in the art of preparing printing plates which consists in photographing a subject to be printed on the back of a metallic plate; applying resist to said back; ■etching the exposed parts of the plate; and alternately removing parts of the resist and exposing the plate to an etching fluid to produce successive gradations in level of the back.
“12. Thé method of making printing plates which consists in etching depressions upon the rear side of a plate in register with a picture which has been produced on the front side of the plate, and subsequently subjecting the plate to pressure to produce gradations in the level of a printing surface on the front of said plate.
“13. The method of producing printing plates which consists in photographing upon the face of the plate a picture to be printed; photographing upon the back of the plate a similar pie"ture, hut reversely arranged with reference to the picture on the face of the plate and in register with it; etching both pictures •on the plate, the one on the hack being etched below the surface in parts corresponding to lighter tones; and subsequently pressing the plate from the back to produce gradations in the level of a printing surface on the etched face of the plate.
“14. The method of producing printing plates which consists in photographing upon the face of the plate a picture to be printed; photographing a similar but reversely arranged picture on the back of the plate in register; etching both faces of the plate; and producing on the back of the plate elevations and depressions, and then pressing the elevated portions of the plate toward the face thereof.
“15. The method of producing printing plates which consists in photographing a picture to be printed upon the face of the plate; photographing a similar reversely arranged picture on the back of the plate in register with the picture on the face; etching both faces of the plate and then further etching the back of the plate to produce elevations and depressions thereon, and then subjecting the back and face to pressures to produce gradations in the level of the etched printing surface on the face of the plate.
“16. The improvement in the art of making printing plates which consists in etching a reversely arranged photograph of the picture in a graduated manner so as to produce elevations and depressions on one face of the plate, and then forcing the elevated portions of the plate toward the face thereof, thereby graduating the levels in a printing surface on such plate.
“17. The process of making printing plates which consists in producing on the back of the plate a reversely arranged fac simile of the picture to be printed upon the face of the plate; then etching the back of the plate to successively greater depths from the dark to the high lights; and subsequently pressing the depressed portions of the plate toward the back so as to produce gradations in the level of a printing surface on the face of the plate.
“18. The method of making printing plates which consists in producing on the face of the plate a photograph of the subject to be printed; photographing the subject to be printed on the back of the plate and in register with the photograph on the front; etching the face of the plate; etching the back of the plate to different depths in a graduated manner; and subjecting the piale to pressure to produce a graduated printing surface on the front of the same.
“19. The process of making printing plates which consists in photographing reversely arranged pictures in register with each other on the front and back of a metallic plate; etching a relief surface on the back of the plate; and then applying pressure to the back and front of the plate, thereby producing permanent differences in profile in the printing surface of the plate.
“20.'The process of making printing plates which consists in photographing pictures on the front and back of a sensitized plate; etching the back of the plate to produce depressions and elevations corresponding but arranged reversely to those which are to appear in the face of the plate; and then pressing the plate to produce gradations in the level of a printing surface on the face of the plate.
“21. The method of preparing printing plates which consists in producing an impression or picture in a metallic plate; etching the plate; and subjecting the plate to differential pressures whereby a graduated printing surface is produced on a face of said plate.
“22. The method of preparing printing plates which consists •in photographing a picture of'a subject to be printed on a metallic plate; producing gradations in the thickness of said plates; and subjecting the plate to pressure to thereby displace the metal and produce a graduated printing surface on the plate.
“23. The method of preparing printing plates which consists in photographing a picture of a subject to be printed on a metallic plate; etching the plate; and subjecting the plate to variable pressures whereby a graduated printing surface is produced on a face of the plate.
“24. That improvement in the art of preparing printing plates which consists in sensitizing both faces of a metallic plate, and photographically printing from a single negative by exposing the sensitized surfaces successively to light through said negative.”

The Commissioner also rejected all of these claims on the issues of three pending interferences, and particularly upon the following counts:

“8. The improvement in the art of preparing printing plates which consists in etching a picture of a subject-on both sides of a metallic plate, and successively etching the back of the plate to produce thereon surfaces in different levels corresponding to the lights and shadows of the subject.
“9. The improvement in the art of preparing printing plates which consists in successively etching away various portions of a picture of a subject on the back of a metallic plate to various depths, thereby producing theteon surfaces in different levels corresponding to the lights and tones of a picture on the face.
“10. The improvements in the art of preparing printing plates which consists in producing on the back of a plate a picture of a subject to be printed; and then subjecting the back of the plate to successive etchings to produce thereon elevations and depressions at predetermined places opposite to the places on the face where the printing is to be respectively light and heavy.
“11. The improvement in the art of preparing printing plates which consists in photographing a subject to be printed on the back of a metallic plate; applying resist to said back; etching the exposed parts of the plate; and alternately removing parts of the resist and exposing the plate to an etching fluid to produce successive gradations in level of the back.”
“24. That improvement in the art of preparing printing plates which consists in sensitizing both faces of a metallic plate, and photographically printing from a single negative by exposing the sensitized surfaces successively to light through said negative.”

Claims 8, 9, 10, 11, and 24 were also rejected on the British patent to Weinwurm No. 14,508 of 1901. The Commissioner held, after a careful review, that the issues of the interferences we have mentioned cover substantially the real invention of this application of Wickers and Furlong, and that the appeal claims are not distinguishable from them. We will not here repeat his clear exposition in his opinion. He fully sustained the Examiner and Board of Examiners-in-Cliief, holding that the separate matters in all the claims brought up on appeal were involved in the issues in interference before mentioned. The Commissioner also regarded the decision of the Assistant Commissioner, who had affirmed.the rejection of the five claims mentioned on the British patent to Weinwurm, and held that claims. 8, 9, 10, 11, and are not patentable over the British patent to Weinwurm.' From this ruling, Wickers and Furlong have appealed to this court.

We have disposed of the series of interferences involving the questions sought to be raised by this appeal from the decision of the Commissioner of Patents refusing to grant a patent for a process of making printing plates to these appellants upon their application filed March 1, 1905. The case of the interference of these appellants against Weinwurm is not before ns. We are convinced that the claims of the application in which this appeal is taken are for the same invention involved in the interferences named in the record in this case, and we concur with the tribunals of the Patent Office that it would be improper to grant a patent, under the circumstances, to the appellants upon this application.

It is so well established that two valid patents may not be issued to a party based upon the same patentable invention that we need not cite authorities. It is the practice in the Patent Office, where an application is allowed to a party, to reject any other applications of the same party upon the allowed application, unless such other applications claim a clearly different invention from’that claimed in the allowed application. In this way the Patent Office limits an inventor to a single patent based upon a single invention. It appears proper, therefore, in a case where a party whose application • is involved in pending interference proceedings presents another application based upon the invention involved in an interference, to refuse a patent upon -the later application until the interference has terminated. A different course would involve inextricable confusion. To suspend action upon such an application appears to us to be just. In the interference proceedings there is ample opportunity for the appellants to raise the question of the sufficiency of their opponent’s application. We greatly doubt whether the affidavits in this record presented for the consideration of this court, and controverting the sufficiency of disclosure found in the Weinwurm application in interference, could be profitably considered by this court. That question should come before us. upon testimony taken in the interference proceeding. Since all the tribunals of the Patent Office concur in holding that all the appealed claims are for the same invention as claims of the appellants’ earlier applications, involved in interference proceedings, we should hestitate to differ with these expert tribunals. The reasoning in several of these decisions is most persuasive that, after the generic process of preparing printing plates with projecting portions on the back thereof, and pressing these to the face of the plates, giving a graduated surface, has been claimed, and the specific mode of preparing the plates by the use of photographing and etching has also been claimed, that there is nothing left to claim in a separate application as a separate invention as a process of making-ready printing plates. What remains would appear to be a mere carrying out of the purposes of the original invention, — matters which ought to be obvious to skilled workers in this art.

A petition by the appellant for a rehearing, filed February 25. 1907. was denied March 6. 1907.

As we concur with the Commissioner upon this general ground for rejecting these claims, we need not discuss the rejection of five of these claims on the British patents to Weinwurm.

The decision of the Commissioner of Patents in refusing to issue a patent to the appellants upon their application in which this appeal comes before us is affirmed, and the clerk of this court will certify this opinion and decision to the Commissioner of Patents in accordance with law. Affirmed.  