Application of Hans Hilmer, Gerhard Korger, Rudi Weyer and Walter Aumuller

The sole issue is whether a majority of the Patent Office Board of Appeals erred in overturning a consistent administrative practice and interpretation of the law of nearly forty years standing by giving a United States patent effect as prior art as of a foreign filing date to which the patentee of the reference was entitled under 35 U.S.C. § 119.

Because it held that a U. S. patent, cited as a prior art reference under 35 U.S.C. § 102(e) and § 103, is effective as of its foreign "convention" filing date, relying on 35 U.S.C. § 119, the board affirmed the rejection of claims 10, 16, and 17 of application serial No. 750,887, filed July 25, 1958, for certain sulfonyl ureas.

This opinion develops the issue, considers the precedents, and explains why, on the basis of legislative history, we hold that section 119 does not modify the express provision of section 102(e) that a reference patent is effective as of the date the application for it was "filed in the United States."

Habicht 2,962,530 Nov. 29, 1960 (filed in the United States January 23, 1958, found to be entitled to priority as of the date of filing in Switzerland on January 24, 1957)

Wagner et al. 2,975,212 March 14, 1961 (filed in the United States May 1, 1957)

The rejection here is the aftermath of an interference (No. 90,218) between appellants and Habicht, a priority dispute in which Habicht was the winning party on a single count. He won because appellants conceded priority of the invention of the count to him. The earliest date asserted by appellants for their invention is their German filing date, July 31, 1957, which, we note, is a few months later than Habicht's priority date of January 24, 1957.

After termination of the interference and the return of this application to the examiner for further ex parte prosecution, the examiner rejected the appealed claims on Habicht, as a primary reference, in view of Wagner et al., as a secondary reference, holding the claimed compounds to be "unpatentable over the primary reference in view of the secondary reference which renders them obvious to one of ordinary skill in the art."

Appellants appealed to the board contending, inter alia, that "The Habicht disclosure cannot be utilized as anticipatory art." They said, "The rejection has utilized * * * the discosure of the winning party as a basis for the rejection. The appellants insist that this is contrary to the patent statutes." Explaining this they said:

* * * the appellants' German application was filed subsequent to the Swiss filing date [of Habicht] but prior to the U. S. filing date of the Habicht application. The appellants now maintain that the Habicht disclosure cannot be utilized as anticipatory in view of 35 U.S.C. 119 which is entitled "Benefit of Earlier Filing Date in Foreign Countries: Right of Priority." This section defines the rights of foreign applicants and more specifically defines those rights with respect to dates to which they are entitled if this same privilege is awarded to citizens of the United States. There is no question [but] that Section 119 only deals with "right of priority." The section does not provide for the use of a U. S. patent as an anticipatory reference as of its foreign filing date. This interpretation of Section 119 is also set forth in the Manual of Patent Examining Procedure (Section 715.01). The Manual refers to Viviani v. Taylor v. Herzog, 72 USPQ 448, wherein Commissioner Coe clarified the question of priority rights with respect to foreign and domestic filing.

Appellants further pointed out that, "The interference only decided the priority of the interference issue [i. e. the count]; there was no decision made nor was there any attempt to decide who was the inventor of the disclosure. The appellants readily admit the priority of Habicht as to the interference issue, but there is no admission as far as the remaining subject matter is concerned."

The board, one member dissenting with an opinion, affirmed the rejection. In the majority opinion there are four statements of the issue. The first is:

As stated by appellants in their reply brief, the main issue presented by this appeal is the availability of the Habicht patent as a reference. This question was argued at length at the hearing and appellants were requested to file, and filed, a further legal memorandum concerning it. [Emphasis ours.]

The third statement (second to follow later) involves an expression of the board's view on the relevance of the interference to the issue and reads:

It is noted that the instant application was involved in an interference with Habicht (before the patent issued), with claim 1 of the patent as the count, and appellants conceded priority to Habicht. However, no questions of estoppel or res judicata can be raised concerning the [presently claimed] cyclohexyl substituted compound; Habicht did not disclose (or even suggest) any cyclohexyl or cycloalkyl compounds, no count to a cyclohexyl compound, or broad enough to include cycloalkyl compounds could have been added to the interference, nor could appellants have relied on such compounds to show priority. Appellants are free to attempt to secure claims to such compounds and to show that they preceded Habicht's date as to them, the question being which date of Habicht is the controlling one. [Emphasis ours.]

We deem this to be a clear statement that Habicht did not claim and could not have claimed the subject matter now claimed by appellants, that therefore there could have been no interference, or priority contest, with Habicht with respect thereto, that for this reason no estoppel or res judicata may be asserted against appellants as a result of the interference, wherefore the question is the effective date of the Habicht patent.1 The board's fourth statement of the issue reads:

With respect to claims 10 and 16, the issue in this case is:

When the claimed subject matter of a U. S. patent is used as a basis for rejecting a claim in an application and the reference patent is found to be entitled to the date of a prior foreign application under 35 USC 119, is the date of the reference which must be overcome, in order to remove it [as a reference], its actual filing date in the United States or the priority date to which the patent is entitled for that subject matter? [Emphasis ours.]

We note that there are two restrictions in this statement not present in any of the others. First, it refers only to claimed subject matter of the "reference" patent. That this was deliberate is shown by a footnote to the very end of the majority board opinion in which the majority said:

13. Whether the foreign filing date can be used for such matters as mere descriptions of prior art, disclosures of species not within the scope of any of the claims of the U. S. patent, etc., which may appear in the specification of the latter, is not decided since such matters are not involved herein.

As we see the facts here, however, the board relied on subject matter not claimed. We regard the restriction as without legal significance because: (1) Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926), discussed infra, creating the rule of 35 U.S.C. § 102(e), here relied on as basic support for the rejection, abolished the distinction between claimed and unclaimed disclosure; (2) within a few months of the decision herein the board decided Ex parte Zemla, 142 USPQ 499 (1964), and Ex parte Rapala (unreported, Appeal No. 225-56, decided Sept. 18, 1964), discussed infra, in which this distinction is not mentioned, so that the board now seems to think, as do we, that, as a question of law, whether the disclosure is claimed is irrelevant.2 Another reason why we shall disregard the limitation to claimed subject matter is that authority higher than the Patent Office, namely the District Court for the District of Columbia in Eli Lilly & Co. v. Brenner, 248 F.Supp. 402 (1965), discussed infra, has effectively removed this restriction in a parallel case as shown in the quotation we later make from its opinion. Lilly was Rapala, supra, in the Patent Office.

The second restriction in the board's fourth statement of the issue is that "the reference patent is found to be entitled to the date of a prior foreign application under 35 USC 119 * * *." To some degree this loads the question. There is in it an implicit assumption that if the patent is "entitled to the date of a prior foreign application," it is entitled to it, and that is that. But one must examine closely into what is meant by the word "entitled." In essence, that is the problem in this appeal and we wish to point to it at the outset to dispel any mistaken assumptions. A patent may be "entitled" to a foreign filing date for some purposes and not for others, just as a patent may be "used" in two ways. A patent owner uses his patent as a legal right to exclude others, granted to him under 35 U.S.C. § 154. Others, wholly unrelated to the patentee, use a patent, not as a legal right, but simply as evidence of prior invention or prior art, i. e., as a "reference." This is not an exercise of the patent right. This is how the Patent Office is "using" the Habicht patent. These are totally different things, governed by different law, founded on different theories, and developed through different histories.

We have seen that 35 U.S.C. § 119 is involved with respect to the so-called "priority date" of the Habicht reference patent. The other statutory provision involved in this case, applicable to both of the references, is 35 U.S.C. § 102(e). Section 102 has been aptly described (Meyer article, infra) as containing "patent defeating provisions." They fall into two classes, events prior to an applicant's date of invention and events prior to filing his U. S. application, related respectively to the requirement of novelty and to provisions for loss of right through delay in filing after certain events have made the invention public. Subsection (e) is one of the novelty provisions, one of the "conditions for patentability," and if the facts of an applicant's case bring him within it, his right to a patent is defeated. This subsection together with the heading and introductory line of the section reads:

§ 102. Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless —

* * * * * *

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, * * *. [Emphasis ours.]

Thus, though both references here were patents copending with appellants' application, issuing after it was filed, 102(e) makes them available as of their U. S. filing dates which are earlier than appellants' U. S. filing date. However, since 102(e) refers to the applicant's date of invention, not to his filing date, he is entitled to an opportunity to establish his date of invention to show that his invention possessed statutory novelty when he made it. In this case appellants did this by showing that they filed a German application earlier than the U. S. filing dates of the references, specified in 102 (e), and that they were entitled to its date for "priority" under section 119. This right is not in question. The board ruled:

Appellants have overcome the U. S. filing date of Habicht by claiming the benefit under 35 USC 119 of an application filed in Germany on July 31, 1957. The specification of this German application has been examined and is found to contain a full disclosure of the subject matter of the claims, and the U. S. filing date of Habicht is considered overcome.

We can now summarize the issue and simultaneously state the board's decision. Continuing the above quotation, the board said:

The Examiner insists, however, that the effective date of the Habicht patent is January 24, 1957, the date of an application filed in Switzerland which is claimed by Habicht under 35 USC 119. Appellants have not overcome this earlier date of Habicht. The issue is hence presented of whether the foreign priority date of a United States patent can be used as the effective filing date of the patent when it is used as a reference. [Emphasis ours, and this is the second statement of the issue by the board.]

* * * * * *

Our conclusion is that the priority date governs * * *.

This is the decision alleged to be in error. We think it was error.

The issue in this case involves a question of statutory interpretation basic to the operation of the patent system. This issue has arisen because after decades of a uniform practice, and interpretation of law which has existed in part since 1903 and in whole since 1926, the Patent Office has made an abrupt about-face; having refused for at least 30 years, after expressly ruling on the question, to apply U. S. patents as references as of foreign "priority" dates, it has changed its practice as made manifest in an unknown number of board decisions. One of them is here on appeal. Another, as will presently appear, has been reviewed under 35 U.S.C. § 145 in the District Court for the District of Columbia where the Patent Office was affirmed, Lilly v. Brenner, supra. A third has been published, Ex parte Zemla, 142 USPQ 499.

There has been a spate of writing on the question of law here involved, all of which we have read. The same ground has been plowed and replowed by authors as well as different panels of the Patent Office Board of Appeals. In chronological order, the following articles and opinions have appeared:

August 1963, "Effective Filing Dates of U. S. Patents Based on 35 U.S.C. Sec. 119," by Leon Chasan and Frederick H. Rabin, 45 JPOS 601-612, attacking the problem "as to which date — the actual U. S. filing date or the earlier convention date — shall be considered as that of filing under 35 U.S.C. § 102(e)." They conclude that "the answer to the question * * * is not free from doubt * * *." The closing sentence is: "It appears likely that the courts will have to rule expressly on this point, possibly in the near future, and it is also quite possible that the position taken by the Patent Office will be reversed." (Herein "Chasan-Rabin article.")

February 25, 1964, the Hilmer opinion below, then unpublished, majority opinion by Examiner-in-Chief Federico joined by Acting Examiner-in-Chief Rosdol, dissenting opinion by then Acting Examiner-in-Chief Behrens, holding that the convention date is the effective date of a U. S. patent as a reference with respect to "claimed subject matter" therein and "the disclosure in the specification relevant to the claimed invention."

March 1964, "An Analysis of the Combined Effect of 35 USC § 119 and 35 USC § 102(e)," by David S. Fishman of the Connecticut Bar, 46 JPOS 181-213, saying "this paper will attempt to demonstrate that such patents [claiming priority to a foreign filing date] should be accorded the foreign filing date for reference purposes * * *." In the context of the article this means as references to defeat claims to patents by all others and with respect to all matter disclosed whether or not claimed, and whether used to show complete anticipation or in support of a claim of obviousness 35 U.S. C. §§ 102, 103. (Herein "Fishman article.")

May 27, 1964, a Commissioner's Notice issued (published June 9, 1964, 803 O.G. 305) revoking a very long-standing section of the Manual of Patent Examining Procedure (MPEP), 715.01 "Reference Claims Foreign Filing Date," based on a Commissioner's decision of May 9, 1935, Viviani v. Taylor v. Herzog, 72 USPQ 448, and providing that an applicant need not antedate the foreign filing date of a reference. The Notice stated that "foreign filing date is considered the effective date in those situations where claimed subject matter of the domestic patent (or disclosed matter related thereto) is being used as the basis for rejection, and where no question of interference exists."

June 8, 1964, this Hilmer appeal filed in this court with transcript of record making the board's opinion a public record.

July 31, 1964, decision rendered by the Board of Appeals in Ex parte Zemla, supra, opinion by Examiner-in-Chief Kreek, joined by Examiner-in-Chief Friedman and Acting Examiner-in-Chief Andrews, holding that a U. S. patent "may be used for all that it discloses as of the date that the same disclosure was made in a foreign country under the Convention." No mention is made of restriction to claimed subject matter or of any interference situation. The basis of the decision is a verbatim copy of the key segment of the Hilmer board opinion, but the limitations of the Hilmer decision are omitted and Hilmer is, of course, not mentioned.

August 1964, "Re: `Ex parte Blumlein'," by Robert J. Patterson, 46 JPOS 597, calls attention to the omission in the Fishman article of a decision of this court, In re Walker, 213 F.2d 332, 41 CCPA 913 (1954), affirming Ex parte Blumlein, 103 USPQ 223 (1952), reconsideration denied, 103 USPQ 224 (1953), which Fishman had characterized as "completely untenable" and "logically unsound" (pp. 205, 206), and saying: "One cannot but wonder if the author of the article would have said anything differently had he realized that the CCPA affirmed the decision of the Board of Appeals."

August 1964, "Re: `An Analysis of the Combined Effect of 35 USC Section 119 and 35 USC Section 102(e)'," by William E. Currie, 46 JPOS 598-599, expresses disagreement with the Fishman article and points to flaws in its reasoning. Currie points out that Fishman omits mention of the caption and the second paragraph of section 119, both of which refer to priority. Currie's view is that section 119, contrary to Fishman's view, thus does contain language restricting the meaning of the words "the same effect" so that they do not include effect as an "anticipation" but are limited to priority issues. Currie concludes:

Therefore, in view of this Section 102(e) should be read to mean just what it says, "filed in the United States." There is nothing in Section 119 to carry over to Section 102(e). Scope of the priority right is discussed in detail in "Foreign Priority Rights under Section 119 of the Patent Act of 1952," Briskin, 39 JPOS 94-121.

Statutory enactment was required to prevent an applicant from establishing anticipation by using his foreign reduction to practice, but in that case there was no basis for interpretation, as there is here. It would seem to be illogical, and adverse to the interests of United States inventors, to give a foreign patent application the status of a reduction to practice for purposes of anticipation.

The last quoted paragraph refers, of course, to 35 U.S.C. 104, which originated, as a statutory enactment, in section 9 of the Boykin Act, Aug. 8, 1946, 60 Stat. 943, both discussed infra.

September 18, 1964, decision rendered by the Board of Appeals in Ex parte Rapala (unpublished, Appeal No. 225-56, heard June 25, 1964), opinion by Examiner-in-Chief Federico joined by Examiner-in-Chief Rosa and Acting Examiner-in-Chief Stone. The opinion substantially duplicates the contents of Hilmer, contains the legal discussion used in Zemla, but like the latter does not limit the use of the disclosure of the U. S. patent held effective as of its British priority date to claimed subject matter or disclosure "relevant to" it. The following statement appears at the outset:

Appellant is aware of the fact that several recent decisions of the Board of Appeals have dealt with the question presented, but inasmuch as these decisions are not public they cannot be used as precedents and the question must be considered anew.

Therefore we find a repetition of most of the Hilmer opinion. As of now, of course, three board opinions are public. See Lilly v. Brenner, discussed infra.

November 1964, a Commentary, by Gary A. Samuels, 46 JPOS 827-828, critical of the Chasan and Fishman articles, the May 27 Notice, and the Board of Appeals decision, expressing the view that the extension of the effective date of U. S. patents used as references backward in time to their foreign filing dates is contrary to the intent of Congress, referring to items of legislative history.

June 1965, "Are Patents Effective References as of Foreign Filing Dates?," by Harold S. Meyer of the Ohio Bar (Mr. Meyer was a member of the Coordinating Committee which helped to write the 1952 Patent Act — see Rich, "Congressional Intent — Or, Who Wrote the Patent Act of 1952?," pp. 61-78, Patent Procurement and Exploitation, BNA, Washington, 1963), 47 JPOS 391-410. Referring to all of the foregoing items, Meyer says: "Those publications and decisions which favor the foreign application date as the effective date of a reference have left out of consideration some significant factors which lead to exactly the contrary conclusion." His article develops this thesis in detail and concludes as to "what the law was intended to be when it was enacted as the present statute, and what it therefore is" in these words: "The provisions of the International Convention and 35 USC 119 * * * establish only priority rights for the claimed subject matter, and do not change the effective dates of references under 35 USC 102(a), (b), and (e)." (Herein the "Meyer article.")

October 6, 1965, Manual of Patent Examining Procedure amended by inserting new section 715.01 corresponding in substance to the May 27, 1964 Notice and Hilmer.

November 1965, a Commentary, by L. Chasan (see August 1963, supra), 47 JPOS 922-924, on the Meyer article in which this co-author says his former position was that while the answer to the problem of statutory construction "was not free from doubt, on balance the case law and the authorities that have considered this have arrived at the conclusion that it is the Convention date which should control." He then tries to discredit some of Meyer's authorities, ignoring the mainstream of his argument and ends by saying:

The matter is of sufficient interest that even the forthcoming CCPA hearings on, e. g., In re Hilmer, Korger, Weyer and Aumuller may not be conclusive. The issue will undoubtedly be raised in interparte [sic] matters of sufficient importance for possible ultimate resolution by the Supreme Court.

December 20, 1965, opinion of the District Court, District of Columbia, in Lilly v. Brenner, 248 F.Supp. 402-434. This was a suit under 35 U.S.C. § 145 to review the decision of the board in Ex parte Rapala, supra, and so far as we know is the last item to date in the general picture. The opinion adopted by the District Court supports the granting of a summary judgment requested by the Patent Office dismissing Lilly's complaint. On the question of law presented, namely, the effective date of a single U. S. patent cited as a reference to support a rejection under 35 U.S.C. § 103 for obviousness, the court agreed with the Patent Office that the effective date was the convention filing date in Great Britain, a date the applicant could not overcome. Had the reference been held effective only as of its actual date of filing in the United States, as plaintiff urged, the Patent Office motion for summary judgment would have been denied. We have most carefully studied this opinion as it is the most recent decision dealing with all of the arguments which have been brought to bear on this problem, contributing not a few new ones. We cannot agree with it.

To make clear what we disagree with, we quote the District Court's own summary statement of its position (248 F. Supp. at 408):

The important question to be settled in this case is one of first impression in this court. The issue may be stated to be whether, in a situation where a foreign inventor has been granted a United States patent on a United States patent application which is entitled under 35 U.S.C. § 119 to the benefit of an earlier application filing date in a foreign country, this United States patent is available as a reference under 35 U.S.C. 102(e) for all disclosed subject matter, whether claimed or unclaimed, as of the filing date of the earlier foreign application. This court agrees with defendant [Patent Office] and holds that the foreign filing date is the effective reference date as to all subject matter which is disclosed, whether claimed or not, in the foreign application, to the extent that such disclosures are brought forward and included in both the United States application and the United States patent granted on this application, the latter, of course, being the basis for a 35 U.S.C. § 102(e) rejection. [Emphasis ours.]

We regret that we find ourselves in conflict with the District Court, especially with an erstwhile colleague, on a question of patent law, and correspondingly in disagreement with several members of the board, but we find ourselves in agreement with the Meyers article, with the Patterson, Currie, and Samuels commentaria, and with the dissenting views of Examiner-in-Chief Behrens who found the history of sections 102 and 119 to give "scant comfort to the majority's interpretation." We find it indeed strange that it has suddenly become imperative to reinterpret a statute which was enacted in 1903, later construed in the light of a Supreme Court decision of 1926, and to invert a practice under which a generation of lawyers since the latter date has obtained for clients close to two million United States patents, counting for their validity on a construction of the statutory law not only followed but promulgated by the Patent Office. Furthermore, in 1952 this law, already a quarter of a century old in toto, was carried forward by Congressional action without change, insofar as it was already statutory, and insofar as it was case law it was codified without change, the particulars of which will be dealt with later. This change in long and continuous administrative practice has also been made without any advance notice, hearing, or stated basis in policy, economics, or international relations. While it may be that the world is shrinking and the very concept of "foreign" should be abolished for the good of mankind, this is not a constitution we are expounding but specific statutes enacted to accomplish specific purposes, the meaning of which should stay put, absent intervening Congressional modifications, for well-understood reasons.

Turning from the general to the specific, we will now consider our specific reasons for construing the applicable statutes as they have for so long been construed, contrary to the recent innovation of the Patent Office.

The District Court in Lilly opens its opinion by observing that the question before it was one of first impression in that court. Here it is otherwise. In 1954 this court decided In re Walker, 213 F.2d 332, 41 CCPA 913. The casual reader of the opinion alone might get the impression, as apparently the District Court did in Lilly (248 F.Supp. at 430), that Walker did not involve the issue here. On careful examination, especially with the aid of the record and briefs, it will be seen to be otherwise. Since it is the one case in point in this court we shall examine Walker first, after which we shall approach the problem of statutory construction primarily in a chronological fashion.

Walker was an appeal from the board decision in Ex parte Blumlein, 103 USPQ 223 (1952), decided below prior to the effective date of the 1952 Patent Act but afterward in this court. The discrepancy in names is due to the death of Alan D. Blumlein, said to be a well known British TV inventor, and his U. S. application was filed by his executrix, Doreen Walker (formerly Doreen Blumlein). As here, Blumlein was given an invention date by reason of the priority statute (then R.S. 4887) as of the filing of his British application on June 5, 1942. Involved as a reference was a U. S. patent to Whiteley, the U. S. filing date of which, February 5, 1943, was after Blumlein's date but the British filing date of which was earlier, February 17, 1942. Blumlein was making the same contention in that case that appellants are making here, that as a reference the effective date of the Whiteley U. S. patent was its U. S. filing date. The board of appeals agreed with that contention. The board also expressly held that Whiteley's British priority date was of "no consequence," apart from the effect of the outcome of an interference between Blumlein and Whiteley.

In the interference with Blumlein, Whiteley was able to assert his priority date which enabled him to antedate Blumlein and win the interference on his claims 1 and 2. In subsequent ex parte prosecution the examiner's rejection which went to the board was restated in his Statement (now called an Answer) in these terms:

Whiteley is considered to be a valid reference for what it shows, since the decision in the above interference was adverse to applicant, and Whiteley proved a foreign filing date prior to applicant's foreign filing date.

* * * * * *

* * * Applicant has failed to show any special circumstances whereby the Whiteley patent is not a reference against his claims.

In essence applicant argues that Whiteley is not an effective reference for what it shows, but only for what it claims. The effect of such a holding would be to grant applicant the benefit of his British filing date, but to deny it to Whiteley who successfully contested common subject matter with applicant.

The board, while agreeing with appellant's view that Whiteley was a reference only as of its U. S. filing date, gave a somewhat equivocal opinion about the effect of the interference, saying:

* * * we are of the opinion that in view of the adverse decision on priority, appealed claims 11 to 17 and 20 were properly rejected as unpatentable over the disclosure of Whiteley as exemplified by the issue of the interference. Accordingly, we sustain the rejection of these claims.

Two subsequent opinions on reconsideration did not satisfy appellant, or clarify for him the exact ground relied on and in appealing to this court three questions were presented: (1) Whether the appealed claims were patentably distinct from claims 1 and 2 of Whiteley; (2) whether under 35 U.S.C. § 119 Blumlein had to overcome Whiteley's British priority date; and (3) whether Blumlein was estopped by the interference from claiming the subject matter of his appealed claims. The court had to and did consider all three questions. This court's opinion expressly considers point "(2)" supra, as the argument "that `By carrying his [Blumlein's] invention back of the domestic filing date of the application which matured into the Whiteley patent, the appellant overcame that patent as a reference for the integrating circuit which is disclosed but not claimed therein,' citing in support thereof the relevant provision of the code, 35 U.S.C. 119 * * *." (Emphasis ours.) The court answered the argument by quoting a paragraph from the Patent Office Solicitor's brief in which he conceded appellant to be correct, that as to structure not claimed by Whiteley it would be "quite permissible" to allow a claim to a later applicant who showed he invented the claimed structure before the filing date of the domestic application of Whiteley. The court then placed its own interpretation on the quoted paragraph saying, "in other words, the solicitor frankly concedes that appellant's quoted argument on the point in issue is `absolutely correct, on the facts stated', but the solicitor contends, and we think properly, that appellant's argument is too broad and inapposite with respect to the case at bar." (Emphasis ours.)

Having passed on that point, the court then proceeded, in effect, to pass on points "(1)" and "(3)", supra, and to hold that the claims were not patentably distinct from the claims lost by Blumlein in the interference and to say that was the true ground of the decision below, which it affirmed on that ground. We therefore have in this Walker-Blumlein case decisions by both the board and this court that as to non-interfering subject matter the foreign priority date of a U. S. reference patent is of "no consequence" and that only the United States filing date has to be overcome. The final decision adopted the first of three possible courses of action for the court as submitted in Walker's brief in the following words:

1. It may affirm the decision below on the ground that the appealed claims and the interference counts are for the same invention and that, therefore, they are res judicata as to the appellant.

But in the process of arriving at that course of action the court did pass on the law applicable where there is no res judicata, as in the present case.3 The court's views at that time were in complete accord with the legal expertise in the Patent Office.

We note that in Lilly, in discussing Walker, the court ignored all of the relevant matters discussed above and proceeded on the assumption it could not possibly have passed on a point on which it did pass. It also ignores the Blumlein decision in the Patent Office on the very issue here involved.

We further note that in the instant case the board's opinion finds "confusion" as to the ground on which this court in Walker sustained the rejection, which we think is clearly stated, and that the board errs in stating the contention of the solicitor and the court's supposed approval of it. The solicitor did not contend that all "subject matter recited in the [Whiteley] claims" was available as prior art as of the priority date. Far from it, he said in his brief, "The issue here in no way involves a foreign filing date of the patentee Whiteley. * * * The rejection here is not upon Whiteley's foreign filing date. The rejection is based upon the adverse award of priority * * *." That is what the court "indicated * * * was proper." We think the board erred further in reading the second opinion on reconsideration in Blumlein (which it refers to as "Walker") in saying that in that opinion "the foreign date was considered relevant with respect to the disclosed but unclaimed components of the combination claimed." We find nothing remotely resembling such a view. In a very short opinion in answer to several requests to clarify its position, what the board did was to reiterate its position that Blumlein's claims were to subject matter "not patentably distinct" from the issue of the interference which he lost. It said nothing at all about "unclaimed components of the combination claimed," as stated by the board here.

On the other hand, appellants here rely on Walker and accurately state what happened in Blumlein and in Walker, contending it is precedent supporting their contention "that the domestic filing date of a patent obtained by a foreign applicant is the critical date to be considered when it is desired to use the patent for anticipation purposes," that is, as an ordinary prior art reference. We fully agree. For the same reasons, we disagree with the Lilly opinion (248 F.Supp. at 430) where it says: "the [Walker] case does not really support plaintiff's position."