of counsel for petitioner in his Memorandum, wherein he states the following:
'The purpose of the questions, which are largely preliminary, is to obtain identification of material used by Watts in making his invention so as to enable Rogoff to prove that this material does not yield the results claimed * * * .'
'All he is seeking is to identify the material * * * and have that material properly tested to see if it meets the standards involved in this interference proceeding'.
The question in interference proceedings is which of the contestants was the prior inventor. The question of the invention is not involved and is in fact conceded. Each party contends for the price of being declared the first inventor. Dooley Improvements, Inc., v. Motor Improvements, Inc., D.C. Del. 1937, 18 F.Supp. 340, appeal dismissed, 3 Cir., 104 F.2d 1013. Priority of invention being a question of the relation of the dates of the invention by the respective parties, it is difficult to see how any testing of the materials used by Watts in making his invention could prove that Rogoff completed his invention at a date prior to the filing of the Watts application.
The petitioner contends that the question of whether or not Watts' specification discloses a basis for supporting the interference count is ancillary to the question of priority of invention. Even if the petitioner is correct in his contention, it is, nevertheless, well settled law that the Patent Office will not receive testimony for the purpose of explaining the disclosure of a pending application except in very exceptional cases. Application of Oppenauer, 1944, 143 F.2d 974, 31 C.C.P.A.Patents, 1248. Counsel for petitioner has not cited, nor has this Court been able to locate one case where the Patent Office or an Appellate body having jurisdiction over the matter has received testimony to explain the disclosure of a pending application, as the petitioner attempts to have done here.
The question of whether or not Watts 'makes the count' must be decided by the Patent Office on the basis of the specification alone. In Cooper v. Downing, 1916, C.D. 227; Id., 45 App.D.C. 345, 348 (1910) the Court stated: 'The Commissioner of Patents properly refused to hear evidence as to what was intended by Downings' original application and disclosure, holding that it is the duty of the tribunals of the Patent Office, composed by men presumed to be sufficiently expert in understanding technical terms and the state of the art, to determine for themselves what an application discloses.'
It is not believed a wise or safe proceeding to permit others outside of the Patent Office to explain, by way of testimony or deposition whether an application comes within the provisions of the statute as to clearness of disclosure. Henderson v. Tanner & Thompson, 1926, C.D. 37 (Comm. 1925). In fact, the Patent Office has gone so far as to even refuse to consider an admission by an inventor himself that his application did not disclose one of the elements called for in the claim at issue in an interference proceeding. In Fishburn v. Vincent, 1937, 88 F.2d 711, 713, 24 C.C.P.A.,Patents, 1079, the Court of Customs and Patent Appeals, on an appeal in an interference proceeding from the decision of the Board of Appeals of the United States stated: 'If Vincent's statement, quoted above, was the only evidence as to disclosure of his application, this contention on the part of Fishburn et al., might carry some weight, but the application is a Patent Office record and the office is the sole judge as to what is disclosed therein. It is well settled that testimony to explain the disclosure of pending applications is inadmissible. Cooper v. Downing, 1916, C.D. (3) 4. And no reason is seen for making an exception in this case. The counts are either supported by the Vincent application or they are not, and nothing that Vincent or anyone else can say will alter that fact.'
It follows that the respondents were justified in refusing to answer questions designed to elicit information as to whether or not Watts' specification discloses a basis for supporting the interference count.
For the compelling reasons set forth, this Court cannot grant the order prayed for.
An appropriate order will be filed denying petitioner's motion.