WOOD IMPREGNATION.

Mr. J. Nota McGill for Lowry.

Messrs. Wilkinson, Fisher, and Witherspoon for Ruping.

BILLINGS, First Assistant Commissioner:

This is an appeal by Ruping from the decision of the Examinersin-Chief affirming the decision of the Examiner of Interferences awarding priority of invention to Lowry upon the following issue:

The herein-described process of preserving wood, consisting in saturating the wood with creosote-oil under pressure while entirely submerged, then removing all free oil, and then immediately subjecting the wood to the action of a vacuum to withdraw most of the oil from the pores and cells thereof.

As appears from this issue the invention is a process for the preservation of timber and is designed particularly for use on railway-ties. It differs from a process for the same purpose patented by Ruping in 1902 in omitting an initial air-pressure used by him. Both the patented Ruping process and the process in issue differ from the prior art in withdrawing a large per cent. of the oil which has been previously forced into the wood.

Lowry is a patentee, and the claim was adopted by Ruping from the patent after its issuance. Lowry derives no benefit in this proceeding, however, by virtue of his patent, since Ruping's application was filed before Lowry's.

Ruping in his preliminary statement alleges that he made the invention in Germany and applied for certain foreign patents in September, 1904, and that knowledge of the invention was introduced into this country in September, 1904, in connection with the preparation of the application involved in this interference. It was held by the tribunals below that these facts had not been proved and that Ruping is entitled to no date earlier than the 10th of October, 1904, the date of filing his domestic application. The holding is accepted on behalf of Ruping on this appeal, as appears from the following in Ruping's brief, pages 1 and 2:

Ruping is a foreigner and, for the purposes of this discussion, his available date of invention and reduction to practice may be taken to be Oct. 10, 1904, the day upon which his application was filed in this country.

Whether Ruping be given a date in September or October, of the year 1904, however, in no way affects the result, as will appear hereinafter. Lowry alleges in his preliminary statement that he conceived the invention in September, 1902, disclosed it to others and reduced it to practice in May, 1903, and that it was thereafter successfully practiced in December, 1903, October, 1904, and March, 1905, and has been used continuously since the latter date.

There is no testimony offered in corroboration of Lowry's statements that he conceived the invention or reduced it to practice in

September, 1902, or May, 1903, and neither of the tribunals below have given him credit for any date earlier than December, 1903 The Examiner of Interferences found the testimony showed that Lowry reduced the invention to practice in December, 1903, at the Riverside shops of the Big Four Railroad, near Cincinnati, and was entitled to prevail on that ground. He also held that Lowry reduced the invention to practice at St. Louis in October and November, 1904, and that he was showing such diligence in perfecting the invention at and after the time Ruping entered the field as entitles him to an award of priority, though the Riverside reduction to practice be disregarded. The Examiners-in-Chief did not find that the operations at Riverside constituted a reduction to practice, but held that Lowry conceived and disclosed the invention prior to the time Ruping entered the field and reduced it to practice in October and November, 1904, at St. Louis and again at Shirley, Ind., in March, 1905, and that he showed proper diligence in perfecting the invention whichever of these demonstrations is relied upon.

It is the contention of Ruping on this appeal that Lowry has not shown a reduction to practice prior to March, 1905, when the Shirley plant was first operated, and that there is no showing of diligence connecting this with a conception prior to October 10, 1904, such as would entitle Lowry to prevail.

That Lowry constructed an experimental plan at Riverside in December, 1903, and there tried out his invention is amply proved by the testimony offered. Lowry testifies that he performed there all the steps called for in the claim in issue, though it is not shown by direct testimony how successfully the last step of the process accomplished its function. Keegan corroborates Lowry as to the use of the process at Riverside in all but the date, which is otherwise satisfactorily fixed. His testimony is in narrative form and indicates an independent recollection of the events. He describes every step of the process performed there, and as to its success he testifies from his personal observation that when the ties were cut up they were found "wet with oil all the way through." Lowry testifies (Q. 37) that the process as a whole was identical with that practiced later at the Shirley plant, and Keegan states that when the ties were piled up after the process some dripped oil and some did not. This would be the expected result if the third step-the application of the vacuum— was successful in withdrawing the surplus oil, inasmuch as some of the ties were there treated by this process and some by a process in which no oil was withdrawn. Furthermore, it is shown that a few months later when Lowry was told of the Ruping patented process as practiced at Perth Amboy, in which most of the oil was withdrawn by a vacuum, he immediately asserted that he could do and had done. the same thing at Riverside without the preliminary air-pressure and

took Clark, an official of the Big Four Railroad, there for the purpose of proving his statement. He found that the apparatus at Riverside had been dismantled without his knowledge, and therefore the demonstration was not made; but the circumstance adds great force to Lowry's assertions that his process was successfully performed at Riverside and that the operation there under this process was identical with the operation subsequently at the Shirley plant, when the excess oil was unquestionably withdrawn by the vacuum.

It has been suggested that the success of the process cannot be held to have been demonstrated at Riverside in the absence of records or direct testimony showing how much oil was withdrawn. The absence of records is satisfactorily explained by the fact that the purpose of the tests at Riverside was primarily to satisfy Kittredge, the chief engineer of the Big Four Railroad, that the hard-wood timber available along the right of way of that road could be creosoted in the usual way, and sections of ties themselves were submitted to Kittredge as the best evidence of the results. The success of the process should not be made to depend upon the extraction of any given amount of oil from the tie, for the claim in issue does not call for the withdrawal of any specified proportion.

It is further contended in behalf of Ruping that if Lowry had known of the invention in December, 1903, or had then successfully performed the process, he would have disclosed it at that time to Kittredge, with whom he was negotiating a contract for creosoting ties and have urged its adoption. His silence, however, is satisfactorily explained by the fact that the ultimate value of the process was not then and is not now positively assured and that it would have been unwise for him to urge or discuss such an unproved process while attempting to close a contract of vital importance to himself and one which the testimony shows was the first of its kind in this country.

Upon the whole, it seems to me satisfactorily established that all the operations constituting the process in issue were practiced at Riverside, and although the testimony as to the effect of the last step-the withdrawal of the oil-is somewhat circumstantial it is believed sufficient to show that Lowry fully reduced the invention to practice at that time, which, being long prior to Ruping's filing date, entitles him to an award of priority.

It is believed, however, that Lowry must prevail even if the operations at Riverside be disregarded. Passing to a consideration of the later alleged practice of the invention by Lowry it is found that there is abundant testimony, including that already discussed, to show that he had a conception of the invention prior to the time Ruping entered the field. Barnard, among others, who prepared Lowry's plans for the Shirley plant, states that the invention was disclosed to him by

Lowry in March or the early part of April, 1904. (X-Qs. 36 and 37; RD. Q. 38.) It is also well established that the process was actually performed under Lowry's direction both at St. Louis in October and November, 1904, and at Shirley, Ind., in March, 1905, and subsequently. The testimony showing these facts is fully discussed in the decisions below and need not be reviewed here in detail.

An objection is urged in behalf of Ruping, however, against holding the St. Louis operations as a reduction to practice, which may be referred to. He asserts that the reports of the runs there made, copies of which are in evidence, show that the tests were of a purely experimental character and so could not constitute a reduction to practice. This contention is based upon calculations set out at length in Ruping's brief tending to show that—

less than 4 per cent. of the hard-wood ties treated at St. Louis were treated in accordance with the specifications of his patent

and that of the pine ties—

less than 19 per cent. come within 10 per cent. either way of the 2 gallons he specified.

This argument loses force, however, in view of the fact, above pointed out, that the issue is not limited to the injection or withdrawal of any stated quantity of oil. If the quantities named in Lowry's specification as an illustration were material, Ruping would have no standing in this interference, for his application is absolutely silent as to the amount to be put in or taken out. Furthermore, this very summary of the results is an effectual admission that the process was, in fact, successfully performed, since in a number of instances the record of the runs corresponded substantially with the example cited in Lowry's specification. Considering the various kinds and conditions of timber treated at that time it would be expected that some considerable variations would be shown in the results, especially in view of the fact that it was not the purpose there to produce a uniform article of commerce.

Since both the St. Louis and Shirley reductions to practice were subsequent to Ruping's date of October 10, 1904, Lowry's diligence becomes material if he is to rely upon either.

At the time Ruping appeared on the field Lowry had succeeded in securing the necessary capital for the construction of the Shirley plant, had arranged with the Allis-Chalmers Company for the making of the necessary plans, which were begun in February or March, 1904, and finished toward the end of the summer, and had invested all of his own available money to bind a five-year contract for oil. He had further during the summer of 1904 made arrangements with von Schrenk to conduct the demonstrations at the St. Louis Exposition in accordance with his invention and had secured oil and apparatus for his use there.

The first retort for the Shirley plant was installed about October, 1904; but the plant was not sufficiently completed for operation until March, 1905, when runs were made in accordance with the process in issue. The building of the plant was a large enterprise, requiring the expenditure of something over $100,000, and it appears that Lowry was devoting his entire time to the project. He had during this period no other business. The time consumed in the completion cannot be considered unreasonable, considering the magnitude of the undertaking. It has been objected by Ruping that the construction of the Shirley plant could not be considered diligence, because Lowry was under contract to creosote ties there under another process. It has been shown, however, that Lowry had in mind from the first the practice of his process at this plant and had the retorts designed especially to facilitate the rapid withdrawal of the free oil to permit the immediate application of the vacuum-a feature peculiar to the process in issue. It also appears from the testimony that Kittredge had given his consent to the use of Lowry's process on the Big Four ties prior to the completion of the plant. It can hardly be urged with reason that Lowry should have first constructed a smaller plant to test his invention, which might have been completed sooner, especially in view of the arrangements for the St. Louis tests, which occurred very shortly after Ruping entered the field.

It must be held, therefore, that Lowry was exercising due diligence in reducing the invention to practice both at St. Louis and at Shirley, and the diligence covers a period beginning some time prior to the appearance of Ruping in the field.

Lowry is accordingly entitled to an award of priority whether his reduction to practice be accepted as that at Riverside in December, 1903, at St. Louis in October and November, 1904, or at Shirley in March, 1905.

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

EX PARTE JULIUS WILE SONS & Co.

Decided February 13, 1911.

168 O. G., 787.

1. TRADE-MARks-DescriptiVE-WORDS WRITTEN IN FOREIGN LANGUAGE. It is well settled that the foreign equivalent of a descriptive word is not registrable. (Ex parte Grocers Specialty Mfg. Co., Limited, C. D., 1903, 10; 102 O. G., 465; Dadirrian v. Yacubian et al., C. D., 1896, 713; 75 O. G., 1856; 72 Fed. Rep., 1010; Roncoroni v. Gross, 86 N. Y. Supp., 1112; 92 App. Div., 22.)

2. SAME-SAME-" ELEGANCIA."

The Spanish word "Elegancia " Held not registrable as a trade-mark. ON APPEAL.