2. SAME-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. APPEAL from the Examiners-in-Chief.

REVOLVER.

Application of Elbert M. Couch filed March 26, 1894, No. 505,075. Patent granted Peter H. Finnegan August 29, 1893, No. 504,154.

Mr. Marcellus Bailey for Couch.

Mr. Geo. D. Robinson and Mr. Allen Webster for Finnegan.

SEYMOUR, Commissioner:

This is an appeal taken by Couch from the decision of the Examinersin-Chief holding that Finnegan was the original inventor of the following issue:

1. In a revolving firearm of the class described, a cylindrical case, a cartridgecylinder having an intermittent rotary movement in said case and having recesses in its periphery, combined with a safety-latch pivotally hung on the border of said case, one end of which passes through said border, a spring under one end of said latch, operating to retain the opposite end thereof normally in engagement with any one of said recesses, substantially as set forth.

2. In a revolving firearm of the class described, the cylinder-case having the integrally-formed tubular breech-block centrally located therein, said block having a slot through its side, extending from its extremity to its base, whereby the nose of the hammer may be passed therethrough, substantially as set forth.

3. The case having the finger-rests on its border, one behind the other, combined with a safety-latch pivotally hung on the border of said case, and having one end opposite the forward end of said projection and its opposite end extending through said border in proximity to the periphery of the cylinder, said rear rest serving as an abutment for the finger for carrying the arm, thereby leaving the outer end of said latch free, combined and operating substantially as set forth.

4. In a revolving firearm of the class described, means for locking and removing the cover of the cylinder-case, consisting of sections of inwardly-extending flanges on the borders of said case, at the end of one of which flanges is a stop to arrest the circular movement of the case-cover, combined with a cover having sections of flanges thereon to engage under those of said case, one of said cover-flanges having a cam at one end to engage with one end of one of said case-flanges, thereby causing the cover to be lifted from the case when turned in one direction, substantially as set forth.

Couch disclaims count 3 of the issue, and therefore it need not be considered.

The inventions which form the subject-matter of this controversy are improvements upon the "protector-revolver" manufactured under Patent No. 273,644 by the Minneapolis Fire Arms Company prior to July, 1892. On May 10, 1892, Finnegan and his business associate, C. E. Corrigan, entered into a contract with the Minneapolis Company for the exclusive agency for the sale of the protector revolver in the State of Illinois. After a few sales were made it developed that the

revolver was defective in that the safety-catch was not automatic and was not easily operated with one hand and that the center-post or breech-block, fastened to the case by screws, would become loose after firing a few times and cause the magazine to be thrown out of alinement. The cap was fastened to the case in such a way that fire and gas would escape and burn the hand when the revolver was fired, and when replacing the cap on the case it would not fit except in one position. The barrel being screwed to the case frequently caused a rough joint, which would prevent accurate firing. Thinking that the revolver, if improved to overcome these defects, would be valuable, Finnegan set about overcoming the objections, and during the summer of 1892 he conceived and disclosed to others the improvements which form the subject-matter of counts 1, 2, and 3 of the issue, these improvements consisting of an extra lug on the front of the case, having a slot through which a spring-pressed lever or safety-catch was pivoted, so that the catch could be under the control of the finger when the pistol was to be fired, and a center-post solid with the case, the post being cut away, so that the hammer could be inserted therein. In June, 1892, Finnegan, with others, obtained from the Minneapolis Fire Arms Company an option for three months for the purchase of the patent under which the protector-revolver was being manufactured and for the machinery used in making these revolvers. About July or August, 1892, he called upou Edwin Smedley, a manufacturer of Dubuque, Iowa, and requested figures as to the cost of the manufacture of a revolver with these improvements.

Smedley testifies that Finnegan showed him the old style of revolver and explained that he wanted the center-post solid with the body, a trigger attachment to prevent the revolver from firing should it fall, and a catch to fasten the cap to the edge of the case. Finnegan called again in about a month to inquire if Smedley could get out ten thousand revolvers for the World's Fair. Owing to the amount of work on hand Smedley concluded that he could not fill the order and advised Finnegan to apply to some arms-manufacturing establishment.

At the time Finnegan obtained the option to buy out the Minneapolis Fire Arms Company that company was negotiating with C. M. Loring, of the Machinery Construction Company, of Rochester, N. Y., to manufacture the protector-revolver for them. During July and August, 1892, about the time Finnegan was negotiating with Smedley, he also began negotiations with Loring direct from Chicago about the manufacture of these revolvers. Loring visited Finnegan at Chicago several times, and during a conversation about the protector-revolver Finnegan explained to him in a general way his several improvements. Loring informed Finnegan that if such improvements were to be made considerable change would be necessary in the tools that Duckworth was using to manufacture the old protector-revolver. Duckworth was a manufacturer located at Springfield, Mass., who had been making the old style H. Doc. 3546

of revolver for the Minneapolis Fire Arms Company. At one of these visits Loring told Finnegan that he would have Palmer, who was then superintendent of his factory at Rochester, go to Springfield with Finnegan to look over the tools and machinery in Duckworth's shop.

On November 19, 1892, Finnegan left Chicago to make the trip to Springfield for the purpose of inspecting the tools in Duckworth's shop, as proposed by Loring. He was met at Rochester by Palmer, who accompanied him to Springfield. Palmer states that on this trip, while on the train, Finnegan explained to him the improved safety-catch, and that he made a memorandum of it in his note-book. This book is offered in evidence. They arrived in Springfield November 21, 1892, where they met Duckworth and examined the tools in his shop.

Before this trip was made to Springfield Finnegan organized a company to manufacture the improved revolver, this company being incorporated October 24, 1892, under the name of the Chicago Fire Arms Company. Prior to the incorporation of this company Finnegan prevailed upon certain persons to take stock in the company by showing them the old-style revolver and explaining the improvements he intended to make.

William Hamilton, a machinist, who subscribed for stock September 24, 1892, testifies that during July or August, 1892, Finnegan took one of the old-style revolvers apart and told him that he was going to make the center-post and barrel solid with the case and cut a slot down through the post to admit the arm of the hammer and that he was going to have a slot cut in the finger rest or lug on top of the case, behind the barrel, and place a trigger or pawl therein-the safety-catch. J. R. Koetter, the president of the company, testifies that in the latter part of August, 1892, Finnegan spoke to him about making the barrel and center-post solid with the case, and that the safety-catch would be put on the front of the case instead of the rear, as in the old revolver shown to him.

William T. Williams, another stock-holder, testifies that in August, 1892, Finnegan asked him to subscribe for stock in the company that was being organized, and told him that he was going to improve the old-style revolver by making the center-post and barrel in one piece with the case, that he was going to change the safety-catch, and that he would attach the cap to the case, so as to prevent escape of gas. In a subsequent interview Finnegan explained the improvements by means of sketches.

John B. Farrel testifies that in August, 1892, Finnegan requested him to subscribe for stock, and showed him a revolver and explained by sketches the improvements which he intended to make-a solid barrel and center-post, safety-catch, and some way of fastening the cap to the case.

C. D. Stanwood testifies that in July, 1892, in an interview with C. E. Corrigan, who asked him to subscribe for stock, Corrigan showed

him one of the old-style revolvers, when he at once saw the defects in the safety-catch, and upon his calling Corrigan's attention to this Corrigan told him that Finnegan had thought of putting a catch on the front of the casing, above the barrel, that would be operated by the first finger pressing a lever. In another interview with Corrigan on August 12, 1892, Corrigan told him about the other improvements— the solid barrel and center-post-that Finnegan was to put on, and also that the cap was to be fastened to the edge of the case, which, if carried out, would materially add to the value of the revolver. He also states that he did not subscribe for stock until he knew that these improvements were to be made.

The sketches said to have been used by Finnegan in explaining the improvements to some of these witnesses are not produced, and all these witnesses are interested to the extent of being stock-holders, yet from their testimony and the testimony of Smedley and Palmer, two disinterested witnesses, it is thought that Finnegan had a full conception of the subject-matter of counts 1 and 2 of the issue, and disclosed the same to others as early as August, 1892, and that at this time he had conceived the idea of fastening the cap to the rim of the case in some way, the specific means for doing this being stated by count 4 of the issue.

Shortly after Finnegan's and Palmer's trip to Springfield Finnegan met Loring and Palmer in Minneapolis, and he was informed that the tools and machinery in Duckworth's shop were of little use in manufacturing the revolver with the improvements, and that Loring could not put the amount of money in the special tools and machinery required for such work. As Finnegan wanted a large number of revolv ers for the World's Fair, he was anxious to have some one make these pistols at once, and on December 6 he and Palmer met at Springfield and again looked over the tools and machinery in Duckworth's shop. They came to the conclusion that these tools were not suitable for the work and that special tools could not be got ready to make the revolvers in time for the World's Fair. They then went to the office of the Ames Sword Company, and Finnegan made a preliminary verbal bargain with that company, through J. P. Woodworth, the superintendent, to make the revolvers. Palmer testifies that at this interview Finnegan, in his presence, explained to Woodworth exactly how he wanted the improved safety catch put on the revolver, and that they talked of making new dies for drop forging. Woodworth, on the other hand, denies that there was any such interview, and states that he knew nothing about the safety-catch about the 6th or 7th of December, the date of this interview.

These negotiations on the 6th and 7th of December, 1892, resulted in a written contract, dated December 27, 1892, between the Chicago Fire Arms Company and the Ames Sword Company, by which the latter agreed to manufacture twenty-five thousand revolvers in all respects

like a model to be furnished by the Arms Company. This model was furnished to the Ames Company January 31, 1893, and accepted. During these negotiations Finnegan gave instructions to Duckworth to make a model with the improved safety-catch thereon, and at the same time he spoke to Duckworth in a general way about other improvements-more particularly about the manner of fastening the cap to the case, which he states he had conceived about December 1, 1892. He states that the reason he did not have Duckworth put on all these improvements was because it would require many changes in the tools and he was anxious to get out the revolver for the World's Fair.

Duckworth began on working drawings for the revolver about Decem ber 5, 1892. The work of construction was begun December 14. Shortly after making the drawings Duckworth, under Finnegan's direction, took one of the old Minneapolis revolvers, soldered a lug on the outside of the case, cut an opening through the case, and mounted therein a safety-catch which operated substantially like the catch shown in "Couch Exhibit No. 3."

Some time in December, 1892, or early in January, 1893, Couch was employed by the Ames Company for the express purpose of designing and making tools for the manufacture of the revolver contracted for by the Chicago Arms Company. He went to work on January 9, 1893, and on that day he began a model revolver, which was completed January 20, 1893, and contained all the improvements covered by the issue. During the time this model was being made Finnegan was a constant visitor at the Ames shop, and a great part of the time he spent in consultation with Couch and frequently complimented Couch for his skill and ability in making this model. After the model was completed it was delivered to Finnegan, who took it to his attorney to have an application for a patent prepared. This application was executed on January 26, 1893, filed February 10, 1893, and Patent No. 504,154, involved in this interference, was issued August 29, 1893, and is assigned to the Chicago Fire Arms Company. Finnegan, with the knowledge of Woodworth, subsequently obtained several foreign patents.

The revolvers furnished by the Ames Company under the contract with the Arms Company contained all the improvements in controversy, and each revolver was stamped "Pat. Aug. 29, '93," the date of Finnegan's patent.

Each party claims the model revolver made by Couch in the shops of the Ames Company between January 9 and 20, 1893, as the reduction to practice of his invention. Finnegan claims that Couch simply embodied the Finnegan ideas in this revolver as instructed by Finnegan, while, on the other hand, Couch claims that he received no instructions from Finnegan about the construction of this revolver, but that the ideas or improvements embodied therein are his own.

The question is which of the two parties is the inventor of the improvements embodied in the revolver made by Couch. Finnegan is a pat