INTERFERENCE-Continued.

them and forgot where they were until after the disclosure of the dates of appellee, is not credible in view of the facts surrounding the case, and amendment to his preliminary statement should not have been allowed. *Id. 17. PRIORITY-DILIGENCE-REDUCTION TO PRACTICE-Croskey conceived the invention in December, 1890, and reduced it to practice October 3, 1892. Atterbury conceived the invention in July, 1892, and filed an allowable application October 1, 1892. Held that Atterbury is the prior inventor in the absence of a showing of reasonable diligence on Croskey's part. *Croskey v. Atterbury, 437.

18. DILIGENCE-REDUCTION TO PRACTICE-When at any time within two years Croskey could have completed his process and failed to do so, he has not established a case of reasonable diligence against Atterbury, who conceived later than Croskey, but filed an application before Croskey reduced to practice. *Id.

19. ISSUE NOT WARRANTED-If no warrant be found in an application as originally filed for one of the counts of an interference issue, the applicant is not the inventor of such count. Dewey v. Colby, 13.

20. METHOD CLAIMS-APPLICATION FOR APPARATUS-Transfer-Claims to a method, if no such method is warranted by the original disclosure, rest upon an uncertain basis; but such claims, if so bound up with the apparatus of another application of the same inventor as not to warrant different ownership of the two, may accompany the real invention, which is the apparatus, proper oath being filed. Id.

21. ASSIGNMENT OF FUTURE INVENTIONS-REDUCTION TO PRACTICE-An agreement is made between an inventor, on the one hand, whereby he assigns a three-fifths interest in his present and future inventions relating to a particular subject, and an assignee, who, in consideration of the three-fifths interest thus acquired, agrees to furnish funds necessary for obtaining letters patent and for exploiting the invention and improvements. In an interference subsequently arising between them the question at issue is simply which party procured from the other the idea of the invention, for the reduction to practice may be regarded as of either. *Milton v. Kingsley, 420.

22. SAME-FRAUD-The assignee, if he made the discovery in question, did so only in the elaboration and reduction to practice of the ideas of the original inventor, and his obligations to the latter he should not now be permitted to repudiate by procuring a patent in which the latter has no interest. To allow this would be to place a premium upon fraud. *Id.

23. SAME-SAME-At the time of the contract it was certainly not contemplated that the assignee should be let into the secrets of the invention and become entitled to the larger share of the profits and yet be free to experiment as he pleased and appropriate to his own use the result of his experiments. Such a course would be a fraud upon the partnership. *Id.

24. PARTNERSHIP-INVENTORSHIP OF ASSIGNEE NOT DECIDED-PATENT TO ISSUE TO APPELLANT-Whether the appellee, who is the original assignee, made the invention in question is not decided; but if he did, he made it for the benefit of the partnership, and therefore the appellant, who is the original inventor, should receive the patent. *Id.

25. Rehearing-Jurisdiction of Court of APPEALS-PRIORITY—Upon a petition for rehearing on the ground that the Court of Appeals of the District of Columbia had no jurisdiction over an interference case appealed to it, except on the question of priority of invention, and yet that, instead of deciding that question, it decided that appellant was entitled to the patent on account of the relations existing between him and the appellee, Held

INTERFERENCE-Continued.

that it was not necessary to adjudge in formal terms that the appellant is the prior inventor when he has been adjudged to be, in law, the only inventor. * Milton v. Kingsley, 426.

26. APPROPRIATING INVENTION OF ANOTHER-QUESTION TO BE DECIDED—If one party has appropriated the invention of another and claims it as his own, there can properly be no question of priority of invention or of prior inventor. There is but one invention and one inventor, and the other is simply a claimant without right. Yet it is not to be supposed that rival claims of such parties do not constitute & proper subject for interference proceedings in the Patent Office. *Id.

27. AMENDMENT-NEW MATTER-MOTION UNDER RULE 122-DISSOLUTION-Failure to make a motion under Rule 122 to dissolve an interference upon the ground that an accepted amendment to one of the applications involved is for new matter amounts to an acquiescence in such acceptance and in the decision of the Office that such amendment does not involve new matter. *Croskey v. Atterbury, 437.

28. PATENTABILITY-CLAIMS INVOLVED IN INTERFERENCE-EX PARTE CONSIDERATION-Where the question of priority has been decided without the suspension of an interference proceeding, the question of patentability of a claim involved in the interference will be considered not inter partes but ex parte by the Primary Examiner. Pell v. Pierpoint, 38.

29. PRELIMINAry Statement—ESTOPPEL-The rule that one is bound by the statements in his preliminary statement applies only to the proceedings in which the parties are involved. Sievert v. Shuman, 47.

30. MOTION TO DISSOLVE-RULE 122-A motion to dissolve under Rule 122 must be made after the declaration of an interference, at which time both parties have the right to be heard. Id.

31. PRIORITY-DILIGENCE-Scudder being the first to conceive of the invention and having used reasonable diligence, under the circumstances, in reducing to practice, is awarded priority. Scudder v. Mergenthaler, 50.

32. SAME-DIligence-INDULGENCE-Scudder, after conceiving of the invention, being confronted with large expenditure as to the making of the machine and with the question whether the machine when perfected was an improvement upon the existing Mergenthaler machine, and not capable of separate and independent manufacture, except by license under the Mergenthaler patents, is entitled to some indulgence while he is enlisting the capital of others, while maturing his own plans, and, in the case of so complicated a machine, while dwelling upon the details of construction. Id.

33. DILIGENCE-FILING APPLICATION Before MakinG TEST-While an inventor might file an application in the Patent Office covering an invention before making a test, yet it is not required that he should do so, but, on the other hand, it is presumable, if it be not required, by plain implication from the language of section 4920, Revised Statutes, that he should occupy himself first in adapting and perfecting his invention. Id.

34. TESTIMONY-CONSTRUING DRAWING-EXPERT WITNESSES-The negative opinion of a witness, however skilled or expert, that a drawing is meaningless of which he was not informed what the subject-matter was does not weigh greatly against the positive testimony of another witness who finds meaning in the same drawing when the drawing itself appears naturally to support such meaning. All the testimony must be construed together, and in such manner that, like charters and statutes, it may have meaning, if it reasonably may, rather than that it fall away. Id.

35. BURDEN OF PROOF-FIRST TO MAKE CLAIM-RULE 116-The first to make a claim in substance and effect covering the invention is the senior party. (Edison v. Ball, C, D., 1895, 811; 71 O. G., 1313.) Richardson v. Leidgen, 63.

INTERFERENCE-Continued.

36. MOTION TO DISSOLVE-IRREGULARITY-BREADTH OF ISSUE-It is a cardinal principle that in declaring an interference the issue must be as broad as the broadest claim included thereunder. Morgan v. Hanson, 65.

37. PURPOSE OF RULE 116-DIVISIONAL APPLICATION-ORIGINAL APPLICATION AS EVIDENCE-The sole purpose of Rule 116 is to determine the position of parties as plaintiff and defendant, in order to determine who shall first take testimony. Failure of junior party to bring motion to shift the burden of proof raises no presumption that his application involved is not a division of an earlier one. In any case he may introduce his earlier one to show that he made the invention of the issue before the date of the application involved. Phelps v. Hardy v. Gattman and Stern, 70.

38. TESTIMONY RELATING to CharacteR OF PARTIES—STRIKING FROM RECORDTestimony concerning the general character of the parties is not evidence and should not be before the various tribunals of the Office, and it should therefore be stricken from the record. Jenkins v. Burke, 74.

39. TESTIMONY-SECOND DEPOSITION-STRIKING FROM RECORD-That a witness may be twice called is a circumstance touching his credibility alone and not the competency of the evidence. A second deposition by a witness, therefore, cannot, as mere matter of law, be excluded from the consideration of the various tribunals. Id.

40. PETITION FOR RECONSIDERATION—A petition asking that the Examiner of Interferences be directed to reconsider his decision awarding priority, upon the ground that such decision is a travesty on equity practice, a gross injustice, that it is in direct contradiction to the evidence, and that the Examiner has exceeded his powers, when the record of the case discloses that the Examiner acted with deliberation and apparent fairness, is wholly unjustifiable and should not have been presented. Clarke v. Pettengill v. Crancer, 75. 41. INVENTORSHIP ACQUIESCENCE IN USE-After C learned of F's patent, he continued to make the patented article and made no protest about F's marking the article "Patented," and did not claim the article so marked as his own invention until after his employers had got into trouble with the owners of the patent. This conduct is not that of a person who had made the invention. Couch v. Finnegan, 79.

42. SAME-Failing to Claim THE INVENTION IN PRIOR PATENT-C obtained a patent which discloses all the improvements embraced in the issue before he filed his present application; but such patent contained no claim to the present interfering subject-matter. This is significant of the fact that C did not consider himself the inventor of the invention in question. Id. 43. PRELIMINARY Statement-Motion to Amend-Denied ON APPEAL-Bent's motion to amend his preliminary statement, granted by the Examiner of Interferences, was denied by the Commissioner on appeal, since the facts do not show sufficient ground for the motion. Foster and Foster v. Bent, 89. 44. SAME-AMENDMENT TO-PRACTICE OF THE OFFICE-The practice of the Office should conform to the modern practice in courts, which allows amendments to pleadings upon a proper showing at any stage in the case; but it is not proper to allow an amendment to a preliminary statement at any stage of the case, as a matter of course, whenever asked for, without a showing of facts to justify it. Id.

45. Same—Same-CONSIDERATION OF-AFFIDAVITS-Motions to amend preliminary statements should not be disposed of upon affidavits alone, but upon the entire record. Id.

46. SAME-SAME-WHEN PERMITTED-Amendments to preliminary statements should be permitted where indisputable facts or clearly proved circumstances support the necessary inference that a mistake has been made which would defeat the ends of justice, and where such facts or circumstances by

INTERFERENCE-Continued.

the exercise of reasonable diligence could not have been found, and in fact were not found, earlier. Id.

47. SAME-SAME-The fact that an affiant who is one of the parties did not give the original preliminary statement adequate study, did not follow back the details in his mind, did not at the time it was made recollect anything important about it, and confused the article which he afterwards manufactured with the one which he then invented are not sufficient grounds to justify disposing of the original statement by substituting therefor an amended one. Id.

48. MOTION TO DISSOLVE-NO INTERFERENCE-OVERCOMING REFERENCE-RULE 75-Appeal by Appert from refusal to grant motion to dissolve, brought upon the ground of no interference in fact and also upon the ground that Schmertz has not overcome French patent to Appert under Rule 75, dismissed upon both grounds. Schmertz v. Appert, 95.

49. APPEAL-AFfidavit-Rule 75-A holding that an applicant has not presented an affidavit sufficient to overcome a foreign patent under Rule 75, since it relates to the merits, is not properly appealable to the Commissioner. Id. 50. AFFIDAVIT UNDER RULE 75-STATING FACTS-An affidavit under Rule 75 should contain not merely the deponent's conclusion that he had invented prior to the time of the reference sought to be overcome, but should state the facts supporting such conclusion. Id.

51. SAME-AIDED BY PRELIMINARY STATEMENT—Ân affidavit under Rule 75 may be aided and supplemented by a preliminary statement made in an interference in which the application is involved. Id.

52. SAME-PRELIMINARY STATEMENT-CONSIDERATION OF BOTH JOINTLY-An affiant under Rule 75, when his application becomes involved in interference, is entitled to invoke the doctrine of priority of mere conception. Even though he can show evidence of nothing but mental acts prior to the date of the reference sought to be overcome, it is the duty of the Office to consider whether his conception was sufficiently clear and distinct and whether under all the circumstances of the case his progress was marked by due diligence. This can only be done upon the full record of the case. Id. 53. PRIORITY OF INVENTION-Failure to ASSERT PRIORITY ON THE Part of a JUNIOR PARTY-A contention that an article embodying the issue was in existence at a time anterior to the production of any such article by the senior party is rendered doubtful by the failure of such junior party, when he learned of the other's invention, to make any suggestion or otherwise assert that he was the true inventor. Johnston v. Stone, 99.

INTERFERENCE BETWEEN PATENTS AND PENDING APPLICATIONS. 1. Bar to GraNT OF PATENT to Applicant-Appeal DisMISSED-During the pendency of appeal in an interference between a patentee and an applicant it conclusively appeared that it is not possible in any contingency to issue a patent to the applicant. Held that the appeal should be dismissed without deciding the question of priority. Hopkinson v. Hunter, 1.

2. SAME-SAME-The Commissioner has no power to determine the question of priority between contestants except they be applicants for patents or except one of them be an applicant to whom, if he should prevail, a patent might at the time of the decision be properly issued. (Bourne v. Goodyear, 9 Wall., 811; Mills v. Green, 16 S. C. R., 132; Cheong Ah Moy v. United States, 113 U. S., 216; Dakota Co. v. Glidden, 113 U. S., 222.) Id.

INTERLOCUTORY DECREES. See Appeal to the Circuit Court of Appeals, 1, 2. INTERNATIONAL CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY. See Trade-Marks, 31.

INVALIDITY OF PATENTS. See Construction of Specifications and Patents, 2; Demurrer, 1.

INVENTION. See Construction of Specifications and Patents, 4, 6, 8, 11, 12, 14; Demurrer, 2; Designs, 2, 8; Particular Patents, 6, 11, 12, 17, 26, 30, 33, 42, 47, 49, 51, 79, 85, 89, 90; Patentability; Process; Public Appreciation Evidence of Invention; Suits for Infringement, 3.

1. SUPPLYING MEANS-AFTERthought-NON-INVENTION-If the idea of furnishing an element to a device was not present to the mind at the time the thing was made, but was an afterthought perceived from subsequent experiences or scientific inspection and analysis, Held that there is no invention in thus by accident supplying the means of a function not contemplated. *Wells v. Curtis et al., 164.

2. SAME-OBVIOUS CHANGE-NO INVENTION-Where the change was required in consequence of the defects suggested, and consisted in widening a pawl of a ratchet-wheel so that its heel would rest upon the tooth behind it, and, as the tooth is straight across the periphery of the wheel, the pawl would be prevented from turning, this being a mere change in form of a part of the combination adopted for the purpose of correcting its occasionally defective action, Held to be a modification so obvious to a person skilled in that subject as not to have required anything more than the ingenuity which such a person might be expected to possess. *Id.

3. INFRINGEMENT-PNEUMATIC TIRES-The Brown and Stillman patent, No. 488,494, dated December 20, 1892, for a pneumatic tire containing an inflatable tube and made inextensible circumferentially by means of circumferential reinforcements along two lines within the edges and above the bottom of the groove, whereby the tire is made to seat itself on inflation and the necessity for mechanical connection with the rim is obviated, construed as to the first claim, which is Held to show patentable invention and to be infringed by the Moomy patent, No. 513,617, of January 30, 1894. *American Dunlop Tire Company v. Erie Rubber Company, 197.

4. ANALOGOUS USE-A claim that an older device was not designed for the particular use to which a new device is peculiarly adapted is no answer to the fact that the older device would perform the same functions. *Codman et al. v. Amia, 291.

5. ROPE-CLAMPS-There is no invention in simply clamping an open ring of metal around a braided or twisted rope to prevent unbraiding or untwisting. *Covert v. Travers Brothers Company, 321.

6. ADAPTATION-The mere adaptation from a different art of devices which successfully accomplish in a given apparatus results hitherto imperfectly accomplished by crude and inefficient apparatus does not involve invention. *Excelsior Elevator Guard and Hatch Cover Company v. Foote et al., 390.

7. PATENTABILITY-SIMPLE INVENTION—An invention does not cease to be meritorious because it is simple. The test should be not whether the mechanism is simple or complex, but whether the patentee has given the world something new, whether the public is richer for his contribution to the art, whether he has produced novel and beneficial results. Invention should be determined more by an ascertainment of what the inventor has actually accomplished than by a technical analysis of the means by which the result is attained. *Gould Coupler Company v. Pratt et al., 392.

8. ICE-Planer-USE OF RACK AND PINION-The use of a rack and pinion for raising and lowering a cutter-head used in an ice-planer does not involve invention in view of the previous use of such rack and pinion for adjusting a wood-planer. Ex parte Briggs, 17.

9. MERE SUBSTITUTION NOT INVENTION-There is no invention apparently involved in putting some other mechanism well known in the art and well adapted