J. DUTHIE vs. G. W. CASILEAR.

Interference.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATION OF JAMES DUTHIE AND THE PATENT OF GEORGE W. CASILEAR FOR A METHOD OF PREVENTING THE ALTERATION OF BONDS, CHECKS, ETC.

(Decided March 13, 1872.)

The descriptive phrases "interlaced ruled lines" and "any of the known means of pen-ruling" are co-extensive.

LEGGETT, Commissioner:

Casilear's claim is as follows:

As an improvement in bank-notes or other similar papers representing value, leaving the spaces for signatures or other written portions entirely blank or free from engraving, and subsequently ruling in by machine over such spaces a lace-work ground designed in fluid inks of opposite actinic powers, to be subsequently written over with ordinary writing-fluid, substantially as and for the purposes set forth.

Duthie's claim is as follows:

The use of a ground-work of writing-inks of different colors upon notes, checks, &c., applied by any of the known means of pen-ruling, substantially as and for the purposes set forth.

Casilear insists that there is no interference between these two claims; that his is limited to interlaced ruled lines," while Duthie's is for "any of the known means of pen-ruling." The substance of the invention in both cases (if there is any invention in either) is the ruling of lines with writing-ink upon such parts of bonds, checks, &c., as are to be written upon in filling said instruments, so that any acids that may be used to remove the writing will also remove these ruled lines, and thereby readily expose fraudulent attempts to raise the denomination of monetary instruments. In this view the two inventions are identical; but even if the invention be confined to the form of lines, Duthie's claim would cover Casilear's, and Casilear's specification reaches over Duthie's.

The position that Casilear's patent is only for "interlaced waved lines" cannot for a moment be maintained. In his "claim" he describes it as a "lace-work ground design," while in the body of his specification he states that his invention "consists in ruling in an ornamental design ground-tint of lines, preferably in the form of waved, crossed, and interlaced work, or such other appropriate design as may be preferred." Neither did Casilear confine himself to the products of a ruling device of his own construction, because he says in his specification that it may be produced "in the manner of ordinary pen-ruling," and "by employing the ordinary ruling-machine." The two specifications describe the same identical invention, and the two claims are substantially the same, and

when construed by the specifications are identical. I cannot entertain a shadow of doubt but the interference was properly declared, and should not be dissolved without judgment of priority.

The history of these cases in the Office is somewhat peculiar. The application of Duthie was filed January 29, 1868, and on the 7th of March of the same year it was the second time rejected by the primary examiner. An appeal was taken to the board of Examiners-in-Chief, and the Examiner was sustained by decision of the board of Examiners-inChief of date May 20, 1868. At this point Duthie seems to have rested, supposing, probably, that the Office would finally hold that his invention was fully met by the references. On the 22d of December, 1869, Casilear filed his application, and patent was issued to him on the 15th of February, 1870. How his case could have passed to issue without an interference with Duthie's I cannot understand; neither can I imagine how his patent could ever have issued at all if Duthie's application was properly rejected. When Duthie discovered that a patent had been given to Casilear upon the same invention for which he, Duthie, had applied and been rejected, he seems to have concluded that the examiner had changed his views as to the sufficiency of the references, and again returned to the Office to secure a reconsideration of his case. The examiner took up the case May 20, 1870, and, without amendment or orders from the Commissioner, declared an interference between it and Casilear's patent. On the 15th of September, 1870, the Commissioner dissolved that interference for the reason that the examiner had no jurisdiction over the case and no authority to declare it. The Commissioner then ordered Duthie's case to be returned to the examiner for further consideration, and on the 20th of October it was again rejected. This action of the examiner was sustained by the board of Examiners, in-Chief, November 28, 1870, and appeal was taken to the Commissionerwho, March 31, 1871, reversed the decision of the Board of Appeals and directed the interference now pending to be declared. Casilear rests his whole case upon his argument tending to prove that there is no interference between the application and patent, and, even if there be such interference, that Duthie was properly rejected by the examiner, and should not have a patent. On the question of priority of invention there is hardly a show of controversy. The testimony clearly shows Duthie to be the first inventor, and this is virtually conceded by Casilear. Duthie was first to invent, first in the Office, and has prosecuted his claims diligently and against unusual obstacles, and is clearly entitled to a judgment of priority.

The decision of the majority of the Board of Appeals is affirmed.

J. H. BARKER vs. J. E. WOODRUFF.

Interference.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF INTERFERENCE BETWEEN THE APPLICATIONS OF JOHN H. BARKER AND JAMES E. WOODRUFF FOR LETTERS PATENT FOR IMPROVEMENT IN MACHINE FOR MANUFACTURING COMPOSITIONROOFING.

(Decided March 14, 1872.)

The parties having been in partnership from the first conception of the invention to the time of its completion, and each claiming to be the inventor, the question at issue is not which was the first inventor, but which was the inventor. There is but one invention. It may have been joint.

This being denied by each of the litigants, he must be considered the inventor who was best able to describe the invention to others when inquiries were made in the presence of both parties.

Especially if the said party, in his description, make personal claims to the invention which are conceded at the time by the other party.

LEGGETT, Commissioner:

The invention in controversy consists of two hoppers-one for composition and the other for sand-arranged over a table composed of sectional blocks attached to two or more endless belts, and arranged so as to carry the web of felting or paper under the hoppers, and in close prox imity to them, to receive the necessary coating of composition and sand.

The testimony is conflicting and very contradictory. The two parties were doing business together when the invention was made, and from its first conception to the time of its completion they conferred together so freely in relation to it that possibly each is honest in claiming to be the sole inventor. The question at issue is not really who was the first inventor, but who was the inventor; for it is conceded that there were no two independent inventions of the device in controversy. One invented it and the other lays false claim to it; that is, if it was the sole invention of either. There is much in the case to lead one to suspect that the device is the result of joint invention, and that there should have been a joint application.

The testimony, however, clearly shows that Barker best understood the machine, and was oftenest called upon to explain it, even by Woodruff; that Barker was the first to reduce it to form. It also discloses many expressions from Woodruff, which amount to a confessiou that the invention was Barker's. Barker's daughter, Ruth, testifies that Woodruff came to their house, and that her father explained the construction of the machine to him, and that Woodruff said it was "just the thing," and that he believed it was new. This testimony is uncontradicted, and

more exactly to the point, probably, than any other taken. There are many assertions of both parties, but this is the only positive testimony showing that it was claimed by one and distinctly conceded by the other.

The testimony, when all considered, leaves no doubt upon my mind, that, if either party was the sole inventor of the device, that party was Barker.

The decision of the Board of Appeals is affirmed, and priority given to Barker.

P. FINLEY vs. G. T. CHAPMAN.

Interference.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATION OF PERRY FINLEY AND GEORGE T. CHAPMAN FOR LETTERS PATENT FOR IMPROVEMENT IN THE PROCESS OF COATING ARTICLES OF MANUFACTURE WITH INDIA RUBBER OR GUTTA-PERCHA.

(Decided March 21, 1872.)

Where, in the melting of caoutchoue or gutta-percha, one party proposes to use heat alone, and the other makes it optional to "facilitate" the operation by the addition of solvents: Held, that as either party is in terms permitted to use heat alone, the optional clanse does not involve such a difference as to put the applications out of interference.

Where one party claimed the process and the other party the article produced: Held, that the applications interfere, as either party "might, by amendment or reissue, insert the claim of the other."

LEGGETT, Commissioner:

The alleged invention involved in this interference is a process of coating articles of manufacture with an enamel of pure India rubber or gutta-percha, or, in other words, of vulcanizing a thin coating of pure rubber unmixed with sulphur.

The record presents a question to be disposed of before discussing that of priority. Chapman moves to dissolve the interference, claiming that the two applications describe different inventions, and that neither interferes with the other. If there is any invention described by either applicant it consists in melting India rubber or gutta-percha by heat alone, and, after being applied to manufactured articles, hardened by placing the same in a japanning-oven heated to a high temperature, and kept there for several hours. This process is described in both applica tions. It is true Finley says the operation of melting will be "facilitated" by the addition of certain solvents, while Chapman says he melts the rubber by application of heat alone, the only difference being that

Chapman limits himself to heat alone, while Finley may use heat alone, or "facilitate the operation of melting" by the addition of solvents. After the article is coated with the melted rubber, Chapman puts it into a japanning-oven heated to a temperature from 280° to 500°, for a length of time varying from one to twenty-four hours, until the coating is thoroughly hardened, while Finley heats the oven from 2120 to 320°, and retains the articles in it from one to twelve hours, until the enamel attains the required degree of hardness. The claims differ in this: Chapman claims the process described, and Finley the article produced; but either might, by amendment or reissue, insert the claim of the other' I have no hesitancy in deciding that the interference was properly declared, and the motion to dissolve must be overruled.

Chapman's application was filed October 15, 1870; Finley's, Febru ary 13, 1871. The testimony shows that Finley began experimenting in 1868, and continued until the date of the filing of his application. Chapman knew nothing of rubber manufacturing until April, 1870, when he met Finley in New York, and became interested in the subject. Finley had already obtained a patent for enameling with hard rubber, which he explained to Chapman, and also at the same time told him that he had discovered a process of enameling with pure rubber, or rubber unmixed with sulphur, and showed him articles which he said were thus enameled. Several witnesses state that Finley said, early in 1869, that he had discovered the process in question, and exhibited articles which he said had been enameled with pure rubber. This assertion, it seems, he often made, and to different persons, between May, 1869, and the time of filing his application. In June, 1870, Chapman became agent for Finley to negotiate a sale of the right to use Finley's patent of 1869 to Morris, Tasker & Co., of Philadelphia. While in Philadelphia Finley again asserted to Chapman that he had discovered how to enamel with pure rubber by heat alone, and signified his intention of patenting the process. Chapman, in his own testimony, virtually admits that Finley is the real inventor of the process and article in question; for, while speaking of his negotiations in behalf of Finley, with Morris, Tasker & Co., he says, on page 48 of his testimony, "I told Mr. Stephen Tasker that a new patent would probably be taken out at some future time for hardening rubber and gutta-percha without the use of sulphur, and that they ought to have the benefit of it without further charge. I think a clause to this effect was inserted in the agreement between Morris, Tasker & Co., and Perry Finley."

Chapman here must have intended to convey the idea to Mr. Tasker that Mr. Finley would get this "new patent," for the conversation was at the time of completing the agreement between Morris, Tasker & Co. and Finley, and he certainly did not propose that said agreement should include his (Chapman's) invention. That it was understood by Chapman and all others concerned that this invention was Finley's, and would be patented by him if by anybody, is further evident from the