Lawrence, Samuel E., vs. Joseph E. Cupples et al...................... Lyman Ventilating and Refrigerating Co. vs. Newell, Chamberlain, et al.. Mann, Henry F., vs. Edwin Bayliss... McDonald, Helen Marie, vs. S. M. Blackmer et al..... Mulford, Lewis J., et al. vs. Thomas D. Pearce et al New York Rubber Company vs. James Chaskel, impleaded with Henry Besels... Putnam, Henry W., vs. Henry W. Yerrington.. Richardson, Lorenzo H., et al. vs. Baxter B. Noyes et al Rouse, Roswell R., vs. Ingram Fletcher, Albert E. Fletcher, Thomas H. Sharpe, Rumford Chemical Works vs. George V. Hecker... Scaife, William B., vs. A. Fulton's Sons & Co.; William B. Scaife vs. Sherriffs and Sewell, Rufus K., adm'or of Henry Clark, deceased, appellant, vs. John Winslow Shoup et al. vs. Henrici and Leng.. Smith, William, and Sons vs. James Marshall & Co ... Sweetser, David H., trustee, vs. Charles H. Helms et al. Tucker, Hiram, vs. The Tucker Man'f'g Co..... Turrell, George B., vs. Edward Spaeth and Charles Guelicker.. United States and Foreign Salamander Felting Co. vs Nathaniel A. Haven..... Co; The same vs. The Lawrence Man'f'g Co Webster Loom Company vs. Elias S. Higgins et al.. Webster Loom Co. rs. James Short and George Whittaker... Webster, William, et al., complainants, and The New Brunswick Carpet Company, defendants.. Westinghouse, George, jr., vs. The Gardner & Ranson Air-Brake Company. Wooster, George H., vs. Gustavus Seidenberg et al. Page. 298 496 438 509 350 292 369 404 470 470 339 430 363 493 439 445 362 450 483 414 256 410 461 488 473 418 313 365 477 412 344 295 513 287 371 524 288 317 415 446 DECISIONS OF THE COMMISSIONER OF PATENTS FOR THE YEAR 1876. LUTHER H. FARNSWORTH vs. E. O. P. ANDREWS. Interference. O. G., vol. ix, p. 195. APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATION OF LUTHER H. FARNSWORTH, FILED NOVEMBER 4, 1873 AND THE APPLICATION OF E. o. p. ANDREWS, FILED OCTOBER 22, 1873, FOR LETTERS PATENT FOR AN "IMPROVEMENT IN MACHINERY FOR CRIMPING LEATHER FOR BOOTS AND SHOES."-Decided November 8, 1875. The Examiner of Interferences is the tribunal before whom an interference is originally to be heard, whether the issue is defined by the Primary Examiner in charge of the class or by the Commissioner in person. The declaration of a hypothetical issue in any case condemned. The matter in dispute between the parties being determinable upon the issue as at first declared, and the testimony then taken, the hypothetical case and testimony taken thereon ignored. Parties being the first to adopt the feature of yielding rollers between which the "former" is passed, and a special adaptation of some sort being necessary for their use, a claim simply covering the new feature in its new connection held not to be too broad. Mechanism taken from a wringing-machine and applied in a leather-crimping machine, with a change in adaptation or construction, fitting it for a new function, is patentable. A feature essential to the operation of a device should be included in the claim therefor. DUELL, Commissioner: This interference was declared December 31, 1873. The subjectmatter involved was defined as follows by the Principal Examiner. In a leather-crimping machine, one or more pairs of rollers, between which the "former" passes, the roller acting with a yielding pressure upon the material, shaping and crimping it to the "form required." The issue, as thus defined, was in almost the exact language of Farnsworth's eighth and Andrews's fourth claim. After the taking of the testimony, and upon the hearing before the Examiner of Interferences, the objection was made by counsel for An drews that the phraseology of the claims in interference, made in deference to the suggestion of the Principal Examiner, was somewhat obscure and difficult of construction, for the reason that the words “rollers acting with a yielding pressure” were capable of being used in a double sense. It was said, for instance, that rollers act with a yield. ing pressure if made of rubber, or they act with a yielding pressure if a frame in which they are placed be drawn down over a form, &c. It is true that the claims, as finally worded, were suggested by the Primary Examiner, but before the eighth claim of Andrews was adopted by him the Examiner informed him by letter that any other form of claim might be submitted which should embody substantially the application of yielding rollers for the purposes described. So both parties had full opportunity to shape their claims or object to the issue as declared by the Examiner. No such objection was taken, however, and no motion was made for a dissolution of the interference on the ground of a defective declaration of the issue. Before proceeding to determine the matter upon the testimony ad. duced, the Examiner of Interferences addressed an inquiry to the Primary Examiner in regard to the construction placed by him upon the term “yielding pressure” in the interfering claims, whether it was essential that the yielding pressure be produced by the interposition of springs bearing upon the rollers or if it was sufficient that the same be produced by the yielding surface of the rollers themselves. To this inquiry the Examiner replied : It is not strictly essential that the yielding pressure be " produced by the interposition of springs upon the rollers.” Where the form is made, in the now common manner, of metal with parallel sides and edges of little more than appreciable thickness, a yielding surface to the rollers will sufficiently compensate for the slight inequalities in the leather being crimped, for which this provision is necessary, that the fibers may not be crushed and broken in maintaining a firm hold upon the stock. A form of varying thickness may necessitate provision for greater play, in the shape of springs upon the journals, but this is merely incidental; ordinarily the seat of the elasticity may be located at will. The character of the material to be operated upon was had in mind in declaring the preliminary interference and the issue involved, and justifies the sense in which the terms of the latter are used. This interpretation rendered the issue clear, and the Examiner of Interferences found no trouble in determining the question of priority in view of the same upon the testimony adduced. He decided in favor of Farnsworth, and Andrews appealed to the Board. The Board held that if the claims in interference were tenable Farnsworth was undoubtedly entitled to priority; but, in their opinion, the claims were entirely untenable, both in form and substance; that the devices, as shown and described by the parties, were clearly different in mode of operation and the results produced, and that if the parties had been restricted to what each had invented and embodied there would have been no interference. They accordingly referred the case to the Commissioner, with the recommendation that the interference be dissolved. Thereupon the Commissiouer suspended the interference, and referred the case to the Primary Examiner for consideration and examination in view of the action of the Examiners-in-Chief. The Examiner, in an able and exhaustive report, substantially reiterated his position in declaring the issue, amplifying his views as expressed in his answer to the inquiry of the Examiner of Interferences, adding, however, that the longitudinal convexity of the rollers should form an element of the claim before a patent was granted, and concluding his report as follows: It does not appear that the parties have been misled as to the real issue in interference. The testimony taken has covered the whole field, and had it not, after the question addressed by the Examiner of Interferences to the Primary Examiner and the reply of the latter, a motion for re-opening the case for taking additional testimony would probably have been granted had this appeared necessary. It seems, therefore, that, without injustice to either party, the interference can proceed, the successful applicant being required to amend his claim to include the matter made essential by the testimony and to obviate objection to the form. -the essential matter here referred to being, as already said, the longi. tudinal convexity of the rollers. Upon this report the Commissioner held that, in view of the same, and the evidence in the case, it was clear that the claim in interference could not rightfully be allowed either party; and he then proposed a claim which, he thought, both parties might have made, and which would have embodied the precise matter which should have constituted the interference. The claim, which he stated should have been set forth, is as follows: In a leather-crimping machine, the combination of one or more pairs of convex rollers, made of hard material and adapted to receive a yielding pressure with the form upon which the leather is crimped, substantially as and for the purposes set forth. He refused to dissolve the interference, holding that sufficient evidence had already been taken to decide the rights of the parties involved and returned the case to the Board of Examiners-in-Chief for their further consideration, first stating that before the application of the party to whom priority of invention should be awarded he should be required to amend his claim substantially in accordance with the suggestions he had therein made. In their second consideration of the matter the Board regarded the claim prescribed by the Commissioner as a new issue, and expressed themselves as finding, without hesitancy, that Andrews was the first to combine and use the matter as therein set forth. If it was the intention of the Commissioner to thus establish a new issue between the parties, and in that light the claim proposed was so regarded in all the subsequent proceedings in the case, his action in returning the case to the Examiners-in-Chief, instead of the Examiner of Interferences, for redetermination was, in my opinion, clearly opposed to a plain requirement of the statute. Sec. 42 of the act of 1870, which is the same as sec. 4904 of the Revised Statutes, imperatively requires that when an application for a patent is found to interfere with any pending application, or with any unexpired patent, the Commissioner "shall direct the Primary Examiner to proceed to determine the question of priority of invention. And the Commissioner may issue a patent to the party who shall be adjudged the prior inventor, unless the adverse party shall appeal from the decision of the Primary Examiner or of the Board of Examiners-in-Chief, as the case may be, within such time, not less than twenty days, as the Commissioner shall prescribe." Clearly the Examiner of Interferences is thus made the tribunal before whom the interference in the first place must be heard. Whether the issue is made up by the Principal Examiner in charge of the class to which the applications appertain, or whether made by the Commissioner in person, there is no way of evading the requirement that the Examiner of Interferences must in the first place determine that issue. That duty cannot be delegated to any one else, as the Supreme Court of this District has already had reason to hold, nor can that tribunal be ignored in such a matter. But the result is an attempt to do these very things, when, after the question of priority is once determined by the Examiner of Interferences, and passed beyond his jurisdiction, it is proposed to so amend the declaration that an entirely different question is presented for adjudication and to refer the new issue to another tribunal than the one mentioned for an original action. As well might the Examiner of Interferences have been ignored from the beginning as to have sent this case back to the Board for their determination upon the new question of priority. The action of the Board involved the absurdity of reversing the action of the Examiner upon an issue which he had never had before him. In fact, he decided one case and they another. Even had the issue, as thus changed, been returned to the Examiner of Interferences, it would have left the proceeding in a very dubious condition, as the claim suggested by the Commissioner was one not adopted by the parties, but was simply one which the Commissioner, from a consideration of the respective applications, thought might have been made, and which he required the parties to make after the question of priority should have been decided. In their last decision the Board, in reviewing their former action, speak of the case as a "merely hypothetical one." Upon the Examiners-in-Chief awarding priority to Andrews and the "hypothetical" issue, Farnsworth appealed to the Commissioner, who adhered to the new issue, (made by his predecessor,) but being in doubt as to the identity in operation of the rollers described by the respective parties, and deeming the evidence not sufficient on that point, ordered the interference suspended for the taking of further testimony in respect thereto. After the taking of additional testimony by both parties the case was again taken up by the Examiner of Interferences and considered de novo on the issue as declared by Commissioner Leggett, and priority was again awarded Farnsworth. Andrews ap |