tended, substantially, that he should have fully constructed it before it was made by Locke, such act being necessary in order to defeat a pat

entee.

The doctrine on which the Office proceeds at present in these cases is that an applicant for a patent is the prior inventor as against a patentee if he was the first to clearly originate the invention and diligent in reducing it to practice.

No principle is better established than that the first inventor is he who first reduces the invention to practical form by embodying it in a machine capable of useful operation, modified, it is true, by the proviso that if the first to conceive the invention is second in reduction to practice, his right to the invention shall not be destroyed if he was using due diligence in perfecting it. (Smith vs. Barber, 7 Official GAZETTE, 1; Gorden vs. Withington, 10 OFFICIAL GAZETTE, 1009.)

Says Judge Story in Reed vs. Cutter et al. (1 Story, 590):

In a race of diligence between two independent inventors, he who first reduces his invention to a fixed, positive, and practical form would seem to be entitled to a priority of right to a patent therefor. The clause of the fifteenth section now under consideration seems to qualify that right by providing that in such cases he who invents first shall have the prior right if he is using reasonable diligence in adapting and perfecting the same, although the second inventor had, in fact, first perfected the same, and reduced the same to practice in a positive form. It thus gives full effect to the well-known maxim that he has the better right who is prior in point of time, namely, in making the discovery or invention. (White vs. Allen, 2 Fish., 440; Reeves vs. Keystone Bridge Company, 5 Fish., 456.)

The 15th section, act of 1836, here spoken of, has substantially the same provisions as sec. 4920, R. S.

Although an interference of this kind is not the same in nature as an action for infringement or a suit in equity to uphold or defeat a patent, the character of proof required to show the fact of invention is the same. The Office herein is considering the question of granting a patent to an applicant who alleges himself to be.the first and original inventor. In determining that question, can it refuse to consider proof as to the time when said applicant discovered the invention and described it to others? Or shall we confine ourselves to the date when the applicant reduced the invention to practice in a full-sized machine? I think not. Although reduction to practice is necessary to show a perfected invention,, the courts or the Office do not hold that nothing anterior to that event can be considered. Sketches, drawings, models, oral and written descriptions, and experiments, all constitute evidence to be considered in determining the question of priority of invention.

Two years prior to the filing of Withington's application takes us back to March 5, 1872. Did he abandon his invention to the public by allowing or consenting to its public use or sale before that time? There is no evidence whatever that he knew of any sale during that time, and it is also perfectly clear that his own use was during the same period experimental.

The decision of the Examiners-in-Chief awarding priority to Withington is hereby affirmed.

N. B. FASSETT.

Reissue; Motion.

O. G., vol. xi, p. 420.

IN THE MATTER OF THE APPLICATION OF N. B. FASSETT FOR REISSUE OF PATENT NO. 127,036, MAY 21, 1872, FILED DECEMBER 2, 1876.—Decided February 24, 1877.

The reason and necessity of the rule requiring an abstract of title to accompany an application for reissue explained, and the practice approved.

DOOLITTLE, Assistant Commissioner:

The above-entitled application for reissue is made by the inventor and four assignees. Three of these assignees appear by the Office records to be the owners of the entire interest. No assignment to the fourth assignee has been recorded. The law requires the Commissioner to grant a reissued patent, "in the name of the patentee, or in the case of his death, or of an assignment of the whole or any undivided part of the original patent, then to his executors, administrators, or assigns, for the unexpired part of the term of the original patent." (Sec. 4916, R. S.)

His action in this respect cannot be impeached for fraud (Seymour vs. Osborne, 11 Wall., 516), and the reissued patent, if granted without the assent of assignees, would be defective. (Potter vs. Holland, 1 Fish., 327; Woodworth et al. vs. Stone, 3 Story, 749; Dental Vulcanite Company vs. Wetherbee, 3 Fish., 87; Meyer et al. vs. Bailey et al. 8 OFFICIAL GAZETTE, 437; J. D. Wright, 10 OFFICIAL GAZETTE, 587.)

It is necessary, therefore, that he should have the record purporting to be the assignment before him, in order to determine whether the alleged assignee is an assignee within the contemplation of the law.

With all due deference to the attorneys, or their clients in this case, their allegation, even under oath, is not sufficient to inform me on this point.

The reissue application will go forward, however, for examination, but will not be allowed until either the assignment of Keller, the fourth assignee, is recorded, or his name withdrawn from the petition.

CHAMBERS AND MENDHAM vs. TUCKER ET AL.
Interlocutory Appeal.

O. G., vol. xi, p. 1009.

IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATIONS OF CHAMBERS AND MENDHAM, FILED MARCH 13, 1876, 8. D. TUCKER, FILED MARCH 18, 1876, AND W. SCOTT, FILED MARCH 20, 1876, FOR "IMPROVEMENTS IN MACHINES FOR FOLDING PAPER."-Decided March 9, 1877.

Both rotating and vibrating folding-blades being old, and it being common to combine them, as well as successive sets of vibrating folding-blades in one machine, held to be a mere duplication of parts, and without invention, to provide a series of rotating folding-blades in their stead.

STANSBURY & MUNN for Chambers & Mendham.

MUNSON & PHILIPP for Tucker.

COBURN & THACHER for Scott.

SPEAR, Commissioner :

This is an appeal taken under Rule 59, from a decision of the Primary Examiner, denying a motion made on the part of Tucker to dissolve the interference. In support of this motion, two reasons for the dissolution were insisted upon: first, that no interference in fact existed between the application of Tucker and those of the other parties, and, second, that the subject-matter declared to be in interference is not patentable. The Primary Examiner overruled these objections, and it is for a review of his decision that this appeal is taken.

The interfering subject-matter is contained in the fourth claim of Chambers's and Mendham's application, as follows:

"In a paper-folding machine, in which the motions of the folding. blades, as well as of the folding rollers, are all rotary and continuous, the combination and arrangement of the successive pairs of folding-rollers, with their respective revolving blades at right angles to each other, for the purpose of producing folds at right angles in the sheet, as described." In their statement of invention they say: "The object of our invention is to provide a machine for the very rapid folding of damp, limp paper, either fed by the hand or received mechanically from the printing. press. It consists of improvements and modifications of the machine invented by us, and patented August 5, 1873, No. 141,489. In that machine the first fold only was made by means of an elastic creasing-blade, and spring gripers attached to the first pair of folding rollers, and acting upon the sheet without arresting its motion. All subsequent folds are made in the ordinary manner, by means of a folding blade acting upon the sheet at rest, above a pair of common folding rollers. In the machine now about to be described all the folds are imparted to the sheet by rotating folding-blades, and by gripers attached to the foldingrollers, all the movements of the machine being rotary and continuous, thus insuring the hightest practicable rate of speed in the performance of its work."

It will thus be seen that the particular invention claimed by these parties consists in the substitution of a rotating folding-blade for the reciprocating blade before employed by them, and the question now to be determined is whether, in view of the state of the art, there was any invention involved in effecting this change.

After a careful consideration of the subject-matter embraced in this interference, I have come to the conclusion that nothing patentable is contained therein, for two reasons: first, because it embraces a mere duplication of parts, not involving invention in its construction (Dunbar vs. Myers, 11 O. G., 35), and second, because the matter claimed merely contemplates the substitution of one known device for another, and "the change with the existing knowledge of the art involved simply mechanical skill, which is not patentable." (Stimpson vs. Woodman, 10 Wall., 117.)

Rotating folding devices and their advantages are well known, and

it is now sought to limit their use by preventing the owners of such folders from using two or more of them to operate successively in folding paper. The sheet as it is delivered by the first folding devices is transferred by tapes into position to be again operated upon by a second folder.

The folding machine described in Tucker's patent of December, 1874, is capable of being so used without material change or alteration, skill alone being requisite in arranging the duplicates for co-operation. Moreover, rotating and vibrating folders have heretofore been combined, and successive sets of vibrating folders have in like manner been used, so that the substitution of rotating for vibrating folders in such combination did not apparently call for the exercise of the inventive faculties, it being only necessary to arrange the delivering-tapes so that the folded paper should be properly delivered.

The mere fact that some of the patented folders could not be combined in the manner stated, without material modification and adaptation, does not entitle them to claim all machines which may be so employed.

In such cases the means whereby the machine is adapted and made capable of performing the functions and producing the results incident to the use of other machines, forms the measure of their invention, and is all that they are entitled to claim.

I hold, therefore, that in view of the state of the art, as exhibited to me, there is no invention in the abstract combination of two rotating folding devices, and the claims thereto are rejected, and the Examiner is instructed to notify the parties accordingly.

The decision of the Examiner is reversed, and the interference dis solved.

MILLWARD vs. BARNES AND BARNES.

Interference.

Q. G., vol. xi, p. 1060.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATION OF FRANK MILLWARD, FILED MAY 15, 1876, AND THE PATENT TO W. F. AND J. BARNES, DATED MARCH 21 1876 "FOR IMPROVEMENT IN FOOT-POWER."-Decided March 13, 1877.

In determining the matter of priority of invention the Office observes the same rules as are followed by the courts in investigating the same subject.

The rule reiterated that he is the prior inventor who first reduces the invention to practice, unless another who was first to conceive of the invention used reasonable diligence in perfecting the same.

Neither a model nor a drawing can be regarded as a reduction to practice or complete invention.

The diligence required of the one first to conceive, in order to make out a superior title to the invention as against one first to reduce the same to practice, is an absolute and not a relative matter, and must be shown to be reasonable under the circumstances.

B. E. J. EILS for Millward.

BALDWIN, HOPKINS & PE.TON for Barnes & Barnes

SPEAR, Commissioner:

The invention included in this interference consists essentially in the application of the velocipede movement as a foot-power for operating various machines. The facts appearing in the case are briefly as follows: Millward conceived of the invention and made a drawing thereof in December, 1873, made working drawings in 1874, and a model in April, 1876. His application was filed May 15, 1876. During the time which elapsed between the making of the first drawing and the filing of his application, he explained the invention to several persons. There is not satisfactory evidence that during this period he exercised diligence in putting his ideas in practicable form. The only effort made in that direction was in ordering patterns for a machine for exhibition at a fair, and, upon finding that they could not be completed in time, he allowed the matter to rest. It would appear from this that, had he been so disposed, he conld readily have completed these machines. Want of time is the only excuse which he offers; but it is not shown that he would necessarily have had to devote any considerable length of time or that he could not have spared what time was required for the purpose. The nature of the improvement is not such as to require a great outlay of time or money, and the burden of proof is upon him to estab lish reasonable diligence. He has never co npleted a machine or tested the operativeness of his devices.

Barnes and Barnes claim to have conceived the invention in dispute as early as October, 1873. They described it to one Gerber in January, 1875, made and operated a machine in January, 1876, filed their appli cation March 8, 1876, upon which the patent was granted them March 21, 1876. Upon this state of facts, and assuming that the testimony of Barnes and Barnes that they conceived the idea in October, 1873, is unworthy of belief, Millward claims that the drawing in December, 1873, is such an exposition of his invention as to entitle him to a judgment of priority.

There seems to be an impression among some persons that it is the duty of this Office to view the question of priority of invention from a different standpoint than that taken by the courts, and to regard proof manifestly insufficient in law to sustain a claim as sufficient to warrant the grant of a patent to one whose invention the courts would consider as having been made subsequent to that of the party to whom patent was refused, and would adjudge the patent invalid for that reason. It is claimed that the Office should regard a drawing or a model as constituting such evidence of priority as to warrant judgment to that effect in an interference proceeding, whereas the courts would not regard it as sufficient to establish the same fact in any proceeding before them.

The statute recognizes the first and original inventor as alone entitled to a patent, and whether it be an interference to determine priority or a defense to a suit for infringement, alleging that the patentee is not the inventor whom the law was designed to protect, the question re