fact that, at Chapman's suggestion, as above, the following clause was inserted in the agreement between Finley and Morris, Tasker & Co., conveying the right to use Finley's patent of 1869, viz., “And the said Perry Finley further promises and agrees with the said Morris, Tasker, & Co., that, in case he shall make any improvement in his said inven. tion applicable to the coating of articles manufactured by them, he will immediately communicate the same to them, and convey and assign to them or their assigns the exclusive use of any such patented improvement for articles named."

This advice of Chapman was given, and this clause inserted in Finley's contract at his (Chapman's) suggestion, on the 11th day of October, 1870, and yet, on the 15th day of the same month, Chapman files his application in the Patent-Office, and swears the invention to be his own. Chapman's own testimony is sufficient to decide the case against him; but his repeated assertion to others that he knew nothing about the matter himself, and that Finley knew all about it, still further tends to convict him of a deliberate attempt to appropriate to himself the invention of another. Mr. Tasker swears that Chapman came to their works in Philadelphia and represented himself as Finley's agent, and exhib ited samples of enameling which he said were made by a process of which Finley was the inventor, and that they contained no sulphur. Tasker and several of his employés swear that Chapman often apologized for his failures in his attempts to apply Finley's invention, by saying that he worked under Finley's directions; that he (Chapman) knew nothing about rubber-enameling except what Finley told him; and that all would be right when Finley arrived.

In all the conversations upon the subject, and all the experimenting with sulphur and without it, there is not a syllable of testimony tending to show that Chapman ever made any claim to the invention in question before swearing to his application, while the proof is clear that he often said that the invention was Finley's. On the other hand, several witnesses testify to hearing Fiuley claim the invention, and to seeing articles which he said were enameled by this process, before Chapman ever met Finley or ever gave any attention to rubber-enameling.

There is really but very faint, if any, testimony outside of the statements of the parties to this interference that either has ever reduced the invention to practice; and to what extent it can be regarded as a completed invention I am in considerable doubt; but as to which made the invention, if either, my mind is very clear.

The decision of the Board of Appeals is affirmed, and priority awarded to Finley.

PHILIP HUFELAND.-EX PARTE.

APPEAL FROM THE EXAMINERS-IN-CHIEF IN THE MATTER OF THE APPLICATION FOR LETTERS PATÉNT OF PHILIP HUFELAND FOR AN IMPROVEMENT IN PENCIL-ERASERS.

(Decided March 21, 1872.)

A block of rubber having been inserted in the end of the wooden casing containing the lead, (Lipman, 1858,) and the end of the wooden case having been enlarged the better to hold the said block, thereby giving a tapering form to the pencil, (Rickendorfer, 1862,) and, later, it having been proposed to place a rubber-holding ferrule on the end of the pencil so as to avoid the said enlargement: Held, that a cylindrical pencil not being new-the benefit of the cylindrical enlargement being now well known-and a paper ferrule not being new, (so far as this application is concerned,) "the use of such a ferrule merely to attach an eraser to a tapering pencil does not call for invention."

The value of the paper ferrule "has no relation to the form of the body of the pencil." LEGGETT, Commissioner:

In 1858 one Lipman patented an improvement in pencils, which consisted of the insertion of a short block of erasing-compound in one end of the wooden case containing the lead. In order to give the requisite surface and rigidity to the inserted block of rubber, the recess formed for its reception was required to be so large that in the ordinary cylin drical pencil the walls were reduced to such a degree of thinness as to be deficient in strength.

To remedy this evil, Rickendorfer, in 1862, conceived the idea of constructing the wooden case of the pencil in tapering form, which per mitted such an enlargement of the upper end as would secure the necessary strength, and at the same time permit the use of a rubber block of the desired size.

At a later date it was proposed, in lieu of this mode of uniting an eraser with a pencil, to use a block of rubber secured to the end of the pencil by means of a ferrule, the end of the pencil being formed into a tenon, the ferrule itself being made of the same diameter as the body of the pencil at the point where the shoulder is formed upon it, so that the outer surface of the ferrule would be continuous with the surface of the pencil; and at the present time there are five different parties before the Office claiming a patent for making this ferrule out of paper. These several applicants are now in interference in order to establish which one is the prior inventor. It so happens that they all show the rubber eraser as attached by the paper ferrule to a cylindrical pencil; but the form given to the body of the pencil must be looked upon as a mere accident, and in no way connected with the invention to which the contest relates; and it is not seen upon what ground the man who proves himself the first inventor of the device of the paper ferrule can be debarred from using it upon any form of pencil upon which it would be capable of use without the exercise of further invention. But the

pending application asks for a monopoly of its use upon pencils with tapering bodies. This must be regarded as an instance of double use. The advantage of the tapering form in making possible the use of a larger piece of rubber is already well known. The advantage of the paper ferrule also is fully understood, having, as above stated, become the subject of a spirited contest for a patent upon it, Hufeland himself, the present applicant, being one of the various claimants. Under such circumstances the use of such a ferrule merely to attach an eraser to a tapering pencil does not call for invention. In fact, it may safely be said that the idea that the inventive faculty could have been employed in this new use of the paper ferrule is absolutely excluded.

There is no relation whatever between the proposed mode of attaching the eraser and the form given to the lower part of the pencil-case. Applicant would have presented a case no less meritorious had he asked for a patent for a pencil having the eraser attached by means of the paper tube, and having a lead of cylindrical section, basing his claim upon the plea that previously erasers had been attached in this manner only to pencils having leads of square section. To grant such a patent would work a manifest and unwarrantable injury to the man who first demonstrated the advantage of the paper ferrule as a mode of attaching the rubber eraser, such device, it is plain, having no logical relation to the shape of the lead contained in the pencil. It seems equally plain that the device in question has no relation to the form of the body of the pencil; and, therefore, the distinctive feature of the alleged invention upon which a patent is asked for being that the pencil-body shall be tapering in form, the grant of a patent must be refused.

The decision of the Examiners-in-Chief is accordingly affirmed.

R. N. ALLEN.

Extension.

IN THE MATTER OF THE APPLICATION OF R. N. ALLEN FOR EXTENSION OF HIS PATENT ON IMPROVEMENT IN RAILROAD CARS, ISSUED MARCH 23, 1858, AND REISSUED DECEMBER 20, 1864.

(Decided March 23, 1872.)

LEGGETT, Commissioner:

This patent should never have been issued. The invention was clearly anticipated by patents granted to Hopkins, February 23, 1858; to Hovey, August 13, 1850; to Letta, August 11, 1857; to Perkenpine, March 18, 1856, and to Tull & Morris, July 3, 1847.

The statement required by law is defective in not showing or attempting to show the ascertained value of the invention; in not properly stating the patentee's receipts and expenditures; and even the defective statement is not under oath, as required by law.

This extension is refused.

F. B. MORSE vs. L. C. CLARK.

Interference.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATIONS OF FRANCIS B. MORSE AND LUCAS C. CLARK FOR LETTERS PATENT FOR IMPROVEMENT IN FELLY-PLATE DIES.

(Decided March 23, 1872.)

Completion of invention—Reducing to practical use in a working machine— Due diligence.

An invention is completed when there is nothing left for study or experiment and it is ready for the hands of the mechanic to apply to practical use.

One who makes a machine goes one step further, as a mechanic and manufacturer, than one who has only made a model; but the law rewards the first inventor rather than the first maker.

Where there is any doubt as to the time of completing an invention, a practical working machine becomes the best evidence to solve such doubt: But

The production of the first practical working machine may only prove that one party has the most money, time, and influence to put the invention into actual use. In such a case the race becomes one of capital, and not of inventive genius.

In the decisions of the courts, where stress has been laid upon the time of the making of a practical machine, the cases were such that completion of the invention could only be determined by inquiring who first embodied it in a working machine. In a case where the prior inventor, though an employé, and so not entire master of his time, and also engaged with other inventions, yet only allows four months to intervene between his invention and the filing of his application for a patent: Held, that the charge of want of due diligence can hardly find a foothold; especially if, after all, he is two weeks ahead of his competitor.

The amount of usefulness of an invention, or the measure of genius required to devise it, cannot properly be taken into account in deciding for or against an application.

LEGGETT, Commissioner:

The invention which is the subject of this interference is a pair of dies for forming felly-plates, in which the plate is formed and its edges are chamfered at one operation. These plates are applied to the inner side of the fellies of carriage-wheels at the joint for the purpose of strengthening the wheel at that point.

Morse's application was filed March 29, 1871, and that of Clark, April 10, 1871. The history of the case is very clearly set forth both by the examiner of interferences and the board of Examiners-in-Chief, but they come to opposite conclusions. The Examiner of Interferences awarded priority to Morse, and a majority of the board to Clark. There seems to be no dispute in regard to the testimony or the facts, and the whole case turns upon the question of "due diligence." The testimony shows that Clark first conceived the idea of invention on the 22d day of Feb

ruary, 1871, that he made a drawing thereof on the 23d, and on the 24th had patterns made, and on the 25th had dies cast from the patterns. He does not claim to fix the date of his invention earlier than February 22, 1871.

Morse shows by several witnesses that he first made the invention, and made a model of full size the last of November, 1869. This model was shown and fully explained to several persons before the 1st of January, 1870. The witnesses state that the model fully and completely represented the invention. This original model is filed as an exhibit in the case, and it certainly sets out the invention as perfectly as the model filed with either of the applications. This I understand to be admitted by the parties and by the Board of Appeals. There can be no doubt of the completeness of Morse's invention. There was nothing left for study or experiment. Invention was finished, and it was ready for the hands of the mechanic to apply to practical use.

Morse, then, first invented the device in question, first put the invention in form by making a full-sized model of it, first explained the use of it to others, and was first to file his application for a patent. These facts are substantially conceded by the majority of the board of appeals; yet they charge Morse with want of due diligence, and awarded priority to Clark because he actually made the first felly-plates, or, as they say, "first reduced the invention to practice." In support of this decision they quote largely from the decision of the Acting Commissioner in the case of Gray vs. Hale, May 27, 1871, and from cases therein cited.

I fully concur in the reasoning of the Acting Commissioner in his able decision in that case, but I fail to find in it or the other cases quoted precedent for the majority report of the board. In the case of Gray vs. Hale, the reasoning was to establish the fact that Gray had abandoned his invention before he completed it, and on the establishment of that fact the decision was based. In the case now in controversy the invention was as fully completed by Morse in November, as it was by Clark in the following February. When Morse completed the model and described its use the work of the inventor was done, and only the services of the mechanic were required to produce the working dies and make the felly-plates. Clark did no more as an inventor in February, 1870, than Morse did in November, 1869. As a mechanic and manufacturer Clark went a step further than Morse; but the law rewards the first inventor rather than the first maker. Where there is any doubt as to the time of completing an invention, a practical working machine becomes the best evidence to solve such doubt; but in this case no such doubt can exist. If the doctrine advanced by the board is correct, then the question of priority must very often depend, not upon the question who first invented, but who had the most money and time and influence to put the invention into actual use. The race becomes one of capital rather than of inventive genius. Poverty may invent, but lack the means to put the invention in the form of practical working machinery;