service of process issued out of a state court, even if one which itself is unable to proceed to judgment, if the state law or practice directs or permits the transfer through change of venue or otherwise to a court which does have jurisdiction to hear, try, and otherwise determine that cause. Whether the action would be barred if state law made new or supplemental process necessary is a question not involved here and not decided. Clearly, however, when process has been adequate to bring in the parties and to start the case on a course of judicial handling which may lead to final judgment without issuance of new initial process, it is enough to commence the action within the federal statute. As these cases were dismissed solely because of a contrary view, the judgments are reversed and the causes remanded to the Supreme Court of Illinois for further proceedings not inconsistent with our opinions herein.

HOOVER COMPANY v. COE, COMMISSIONER OF PATENTS.

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE DISTRICT OF COLUMBIA.

No. 486. Argued March 5, 1945.-Decided April 30, 1945.

1. A federal district court has jurisdiction of a suit under R. S. § 4915 to review a decision of the Board of Appeals of the Patent Office rejecting a claim as not reading on the disclosure in the application for a patent. Pp. 80, 83.

Jurisdiction is not defeated by the fact that an adjudication favorable to the applicant might not conclude all possible questions as to the applicant's right to a patent.

2. The right of the applicant in such case to sue under R. S. § 4915 is supported by the language of the statute, its legislative history, administrative practice, and judicial construction. Pp. 80, 84. 3. Hill v. Wooster, 132 U. S. 693, distinguished. P. 89.

144 F. 2d 514, reversed.

Opinion of the Court.

325 U.S.

CERTIORARI, 323 U. S. 697, to review the affirmance of a judgment dismissing a suit against the Commissioner of Patents under R. S. § 4915.

Messrs. William D. Sellers and Richard R. Fitzsimmons, with whom Mr. William S. Hodges was on the brief, for petitioner.

Mr. T. Hayward Brown argued the cause, and Solicitor General Fahy, Assistant Attorney General Shea, Messrs. Robert L. Stern, Joseph B. Goldman and Joseph Houghton were on the brief, for respondent.

MR. JUSTICE ROBERTS delivered the opinion of the Court.

The question presented is whether a District Court has jurisdiction of a suit under R. S. 49151 to review the refusal of a claim for patent as not reading on the application. The court below answered in the negative.

The respondent confesses error. The language of the Act, its legislative history, administrative practice, and judicial construction, constrain us to hold that the District Court had jurisdiction of the suit and that the Court of Appeals should have reviewed its decision upon the merits.

January 10, 1941, the petitioner's assignor filed application for a reissue of a patent granted November 7, 1939, on an original application of August 8, 1936. The alleged invention is for improvements in a refrigerating system. A number of claims included in the application for reissue were copied, or substantially copied, from several later patents, in order to provoke interferences therewith and a contest as to priority of invention.

The Primary Examiner finally rejected four of the claims, stating that they were rejected "as not reading on applicant's disclosure." The Board of Appeals of the Pat

135 U. S. C. § 63.

79

Opinion of the Court.

ent Office affirmed the Examiner's decision. The petitioner then brought suit against the Commissioner of Patents under R. S. 4915 in the United States District Court for the District of Columbia, to compel him to allow the four claims, to the end that interference proceedings might be instituted. The case was heard on the Patent Office record and additional evidence. The court entered findings of fact and conclusions of law and dismissed the complaint on the ground that the claims did not read on, that is, did not accurately describe, the disclosure in the application.

On appeal the court below on its own motion raised the question "whether [R. S. 4915] confers jurisdiction on the District Court to enter a decree which does not determine the right of the applicant to receive a patent but which instead directs the examiner to allow claims for the purpose of provoking subsequent interference proceedings." The parties were heard upon this question and the court decided that the District Court lacked jurisdiction of the suit, and on that ground affirmed its judgment of dismissal."

R. S. 4915 is in part:

"Whenever a patent on application is refused by the Board of Appeals or whenever any applicant is dissatisfied with the decision of the board of interference examiners, the applicant, unless appeal has been taken to the United States Court of Customs and Patent Appeals, and such appeal is pending or has been decided, in which case no action may be brought under this section, may have remedy by bill in equity, if filed within six months after such refusal or decision; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim or for any part thereof, as the facts 2144 F. 2d 514.

Opinion of the Court.

325 U.S.

in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the commissioner to issue such patent on the applicant filing in the Patent Office a copy of the adjudication and otherwise complying with the requirements of law. In all cases where there is no opposing party a copy of the bill shall be served on the commissioner; and all the expenses of the proceedings shall be paid by the applicant, whether the final decision is in his favor or not."

The court below held that in conformity to the general rule, a court of equity ought not to afford piecemeal relief pending completion of the administrative process, and consequently ought not to entertain a suit under the statute unless its adjudication would conclude all possible questions as to the right to a patent.

1. On its face the statute confers the right to sue "Whenever a patent on application is refused by the Board of Appeals." The patent applied for (that is, the claims in question) was finally refused by the Board of Appeals. No appeal was taken to the United States Court of Customs and Patent Appeals, and petitioner filed its bill within the time limited in the section.

Two matters may be noted respecting R. S. 4915. These are the denial of jurisdiction if appeal has been taken to the United States Court of Customs and Patent Appeals and the statement that adjudication in favor of the applicant shall authorize the Commissioner to issue a patent. These provisions require reference to R. S. 4911, as amended. That section provides:

"If any applicant is dissatisfied with the decision of the board of appeals, he may appeal to the United States Court of Customs and Patent Appeals, in which case he waives his right to proceed under section 63 [R. S. 4915] of this title. If any party to an interference is dissatisfied with the decision of the board of interference examiners, he may appeal to the United States Court of Customs and

79

ent Of tioner the

ents un for the

four ex be in..

recor

ings.

Opinion of the Court.

peals: Provided, That such appeal shall be if any adverse party to such interference shall, 'enty days after the appellant shall have filed appeal according to section 60 of this title, file ith the Commissioner of Patents that he elects all further proceedings conducted as provided in 63 [R. S. 4915]. Thereupon the appellant shall irty days thereafter within which to file a bill in under said section 63 [R. S. 4915], in default of the decisions appealed from shall govern the further dings in the case."

s evident that alternative rights of review are acI an applicant,-one by appeal to the United States t of Customs and Patent Appeals, the other by bill uity filed in one of the federal district courts. In first the hearing is summary and solely on the record le in the Patent Office; 3 in the other a formal trial is orded on proof which may include evidence not preted in the Patent Office. Every party adversely ected by a ruling on the merits may, if he so elect, proed by bill rather than by appeal. In the one case the lication in equity authorizes issue of a patent on the cant's "otherwise complying with the requirements law." In the other the decision "shall govern the her proceedings in the case" in the Patent Office." The question is whether the differences in the character the proceedings and the statutory effect of decision or

dication require a holding that as to all decisions on the merits adverse to the applicant, other than the final acon as to the issue of a patent, the applicant must obte...eview by appeal to the Court of Customs and Patent als, and can proceed by bill under R. S. 4915 only every step requisite to issue has been taken. If so,

R. S. 4914, 35 U. S. C. § 62.

Putterworth v. Hoe, 112 U. S. 50, 61.

R. S. 4911, supra.